The production company behind the Peaky Blinders TV show has taken issue with the existence of an unofficial Peaky Blinders themed bar in Manchester.
Caryn Mandabach Productions Limited (Caryn) has sent a cease and desist letter to the bar and has stated that it has no authorisation to use the Peaky Blinders brand.
This highlights the importance of taking legal advice from a Chartered Trade Mark attorney before using trade marks and images owned by third parties.
The themed bar is called Peaky Blinders Manchester and it uses stills from the show as part of its décor.
Caryn owns a trade mark registration protecting the term PEAKY BLINDERS for recorded shows and television entertainment as well as additional goods and services, including live entertainment.
Graeme Murray of Marks & Clerk’s Manchester Office commented that “whilst the Caryn registration does not extend to bar and restaurant services, it is arguable that the bar is using the mark for identical services in relation to live entertainment, and similar services in relation to the bar and restaurant offering. As a result it is arguable that the consumer would be confused as to the origin of the bar’s services and believe that the bar is operated or authorised by Caryn. Furthermore, due to the significant reputation of the PEAKY BLINDERS trade mark, even use for dissimilar services to those protected by Caryn’s registration could in theory constitute infringement.”
John Ferdinand a Partner based in Marks and Clerk’s Birmingham office added that “in addition to trade mark infringement Caryn may also have grounds to claim passing off on the basis that the use of the PEAKY BLINDERS trade mark and images from the show is likely to mislead the consumer into the mistaken belief that the bar is operated or authorised by Caryn, thus damaging the goodwill in the PEAKY BLINDERS trade mark. Furthermore the use of the film stills could potentially constitute copyright infringement.”
The bar has argued in response that it is only using the name to reflect that it is a fan-based theme bar but this in itself may not be a defence to infringement if Caryn is successful in showing consumers would nonetheless associate the bar with them.
The take home message is that any business considering conducting similar activities should certainly take heed, conduct research and ideally seek advice from a Chartered Trade Mark Attorney or IP specialist solicitor before using or referencing third party owned brands and images as part of their business activities.