Q) I run a chain of small boutiques selling swim and beachwear. Our store is recognisable by its bright orange and pink stripy interior, which we also use for all our packaging. Recently it came to our attention that an online swimwear distributor’s website is using our unique colour combination in the same stripy fashion. The company could easily be confused for the online arm of our boutique. Is there any way we can contest this?
A) Your trademark advisor should write to the other side threatening "passing-off" proceedings and you should be prepared to start them if your warning or any subsequent correspondence does not persuade them to change their colours. Passing-off proceedings are not easy - you have to prove in Court your reputation, the extent to which your colour scheme is distinctive of your business, that there has been or is likely to be confusion and that you have or are likely to suffer damage. If matters got to trial, the outcome would depend on the evidence. The other side might argue that such colours were commonplace in relation to swim/beachwear and its retail. Actual confusion - evidence that someone had bought goods from your competitor's site believing it to be yours - would be most useful.
If you have used your colour combination for long enough and in such a way for it to have become distinctive of your business, you should also file a trademark application to protect it. Trademark attorneys can best advise on this. Evidence of the distinctiveness of the combination in relation to your business will likely be needed to succeed, but if granted, future problems of this sort should be much easier and cheaper to resolve.
First published in the Financial Times, June 2013