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Establishing a Brand? Lawyers Know How to Protect Your Investment!

Huge investments of time and money that go into establishing successful brands in the public mind would routinely be wasted were it not for trade mark protection. The point was powerfully made by a case in which Claridge’s Hotel successfully sued a small company which sold candles under a confusingly similar name.

The hotel, which has become a byword for luxury since it opened in 1889, did not dispute that the company’s founder had selected the word ‘Claridge’ to describe its range of scented candles because she liked the sound of the word, which also formed part of her street address, rather than with the hotel in mind.

However, in upholding the hotel’s claim that the candles infringed its ‘Claridge’s’ trade mark, the High Court noted that the two words are visually and aurally almost identical, one being the possessive form of the other. The trade mark had a distinctive character and was the focus of the hotel’s very substantial reputation for luxury, glamour, exclusivity and elegance.

Although there was no direct evidence of actual confusion, there was a risk that the public might view the candles as economically linked to the hotel. The use of the word ‘Claridge’ to market the candles had an effect on the economic behaviour of the company’s customers, enabling it to sell more products at higher prices, and took unfair commercial advantage of the hotel’s reputation.

In also upholding the hotel’s passing off claim, the Court found that, notwithstanding the difference between the hotel’s services and the candles, the ‘Claridge’ branding of the latter was likely to lead the public to believe that they were in some way connected or associated with the hotel.

The Court found that the classes of goods covered by the trade mark were in some respects too wide and that amendments would accordingly need to be made to its registration. However, its decision opened the way for the hotel to seek damages and an injunction against the company and its founder and majority shareholder, who was found jointly and severally liable for the infringement.