Concept for Intellectual property dispute - M&S hitting the headlines again

It has only been a few months since Marks & Spencer settled their dispute involving Colin the Caterpillar, but this time they are in the news again with another intellectual property dispute. However, this time it is the turn of Percy Pig.

What is the dispute about?

A small ice cream parlour based in Hertfordshire had created an ice cream featuring the porcine sweets. They recently received a letter from Marks & Spencer’s legal team stating that whilst they could continue to use the Percy sweets in their ice cream product, they could not proceed to call the product “Percy Pig Ice Cream”. The letter stated this was because consumers will no longer be confident Percy Pig branded products originate from Marks & Spencer.

The owner of the ice cream parlour complied with the letter and has now renamed the ice cream.

Importance of trade mark registration?

Trade mark registration gives the owner a monopoly over the mark and the right to sue for trade mark infringement. Here Marks and Spencer could rely on their trade mark for PERCY PIG which has been registered since 2007, to prevent the ice cream parlour from naming their ice cream “Percy Pig ice cream”.

The letter went on to explain that had Marks & Spencer failed to enforce their registered trade mark they would be risking potential acquiescence of their rights. Acquiescence can result if a trade mark owner knowingly allows others to make use of their mark for a continuous period of 5 years, they will lose the right to sue for infringement.

Good publicity?

The letter sent by Marks and Spencer (which was subsequently posted online by the owner of the ice cream parlour and enclosed a pack of the Percy Pig sweets) is a good example of how a polite, friendly and reasonable letter can achieve the desired result without the need for legal proceedings. Plus the bonus of welcomed publicity for both Marks & Spencer and the ice cream parlour. It will also serve as a good reminder of the importance of protecting your trade mark no matter what size the business is but to temper your approach.

It is important that such communication is worded correctly to avoid falling foul of the threats provision in Intellectual Property Law and to ensure the correspondence is appropriate should further action be required.

To find out more about how to protect or enforce trade marks, or for any advice if you are the recipient of enforcement communications, please get in touch with our specialist Trade Marks team.