15 May 2023
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A small family-run ice cream parlour based in Hertfordshire has recently renamed its 'Perky Pig Gelato' to 'Fabio's pig', after receiving a polite request from the well-known retailer Marks and Spencer regarding one of their 'hero' trademarks.

Reading between the lines of the reporting, it sounds as though M&S handled this matter in a sensible and a relatively amicable manner, no doubt being mindful of the possibility of adverse publicity – particularly as the company has been in the media spotlight recently for various trade mark tussles, most notably with Aldi.

It is arguably understandable why M&S wanted to enforce their rights in its PERCY PIG registered trade mark. PERCY PIG is a valuable brand, while ice cream is quite an obvious brand extension from confectionary. One only has to see the number of ice creams offered by Cadburys, for example, under its various chocolate bar brand names to realise that this is true. The likelihood of consumer confusion was therefore apparent.

The comments from the owners of the ice cream parlour wondering “why no-one ever moaned [about their use of various brand names for flavours, including chocolate bars, energy drinks and Marmite]” may well simply be down to the fact that the owners of these other brands were not aware of the ice cream company’s use of their brand names. This of course does not give company owners a ‘green light’ to use the trade marks of others.

Frustratingly, the story also underlines the apparent continued ignorance of many people and companies about trade mark rights, believing that they can use another party’s registered mark without any risk of recourse. That said, the comment that the ice cream company “always knew someone might say something” implies that it perhaps did recognise that M&S owns some kind of rights in the PERCY PIG name, yet it still went ahead with its use of the name. I do wonder if there may be some kind of exhaustion or descriptiveness defence available for the ice cream company to explore though, if it is using genuine PERCY PIG-branded sweets in its ice cream.  

Nevertheless, the publicity that the ice company seems to have received from the matter will have no doubt boosted its business, perhaps even turning a negative situation into a quite a positive one for them.

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Andy is a Partner and Chartered Trade Mark Attorney at Mewburn Ellis. He handles a wide range of trade mark work, from searches, portfolio reviews and devising filing strategies to prosecution of applications, oppositions, revocation and invalidity actions. Andy has extensive experience representing clients at the UKIPO, EUIPO and WIPO (for international ‘Madrid Protocol’ registrations).

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