To add to Mike Ashley’s headache following the entry of Debenhams into administration, his company SportsDirect is facing a trade mark infringement claim brought by the owner of T.K. MAXX (TJX) for SportsDirect’s use of BRAND MAX.
TJX owns trade marks for T.K MAXX and the familiar T.K. MAXX logo (see below). SportsDirect has launched BRAND MAX, a discount fashion business selling designer products in 18 physical stores and online at brandmax.com. TJX claims that the use of BRAND MAX infringes TJX’s trade marks.
To add insult to injury (as far as TJX is concerned), SportsDirect has also filed trade mark applications for both the BRAND MAX name and logo. These applications were successful in Ireland but have been opposed by T.K. MAXX in Europe.
Visually, the two brands differ in a number of ways on storefronts: the font is different; the T.K. MAXX logo has partially overlapping X’s whereas BRAND MAX’s does not; and the BRAND MAX logo features an arrow (containing the words “DESIGNER OUTLET”) adjacent to the “X”.
These differences have not deterred TJX however, which claims that:
(a) the T.K. MAXX trade marks are very well-known, and are often used in the context of the word “brand” (such as the slogan “Big brands for less”), therefore members of the public might be misled;
(b) the “MAXX” part of the mark has enhanced distinctive character;
(c) consumers are likely to remember the mark imperfectly, and conceptualise or misspell “MAXX” as “MAX” instead;
(d) the public may wrongly associate BRAND MAX with T.K. MAXX (presumably thinking that BRAND MAX is a sub-brand of T.K. MAXX);
(e) there is therefore a likelihood of confusion, and SportsDirect is taking unfair advantage of the reputation of the T.K. MAXX marks, and passing off.
SportsDirect does not deny that the goods sold by both stores are similar, but it denies that consumers will confuse or link the two brands on the following basis:
(a) there are numerous differences between the word marks and the logos for T.K. MAXX and BRAND MAX; and
(b) BRAND and MAX are ordinary English words, and are likely to be perceived as describing the goods sold by BRAND MAX, rather than intended to make consumers think of T.K. MAXX.
What are the implications of this case?
Whilst the trial is some way off and the outcome of the claim is, as yet, uncertain, there are three interesting points at this early stage.
First, the court will need to decide whether the T.K. MAXX trade marks are distinctive and/or well-known and, if so, which aspects are distinctive (e.g. does “MAXX” have enhanced distinctive character? Is the T.K. MAXX mark only distinctive in the eyes of consumers when combined with a red background?)
Second, are the marks similar or is TJX simply trying to prevent other brands from encroaching into what it perceives as its area of the market? At first sight, the trade marks look and sound quite different, particularly when applied to store fronts in logo form. TJX therefore has work to do to persuade the court that the marks are sufficiently similar to create a likelihood of confusion, or at least a link in the minds of consumers.
Third, will the dispute be resolved by way of a compromise between TJX and Sports Direct? This could include a commitment from SportsDirect to make changes to the BRAND MAX sign in order to move it further away from the T.K. MAXX trade marks. For example, SportsDirect could agree that:
(a) the SportsDirect logo be placed in front of the words BRAND MAX;
(b) additional words or design elements be added to the sign to further distinguish it;
(c) the arrow adjacent to the “X” on the BRAND MAX mark be made more a prominent; and/or
(d) additional wording such as “DESIGNER OUTLET FOR SPORTSDIRECT”, be added.
Whatever the outcome, TJX’s claim is an example of the extent to which large brands are prepared to chance litigation at the margins of their trade marks’ scope of protection, to keep as much clear blue water as possible between their marks and brand and those of their competitors.