Following Marks & Spencer’s well-publicised cake dispute with Aldi over Colin the Caterpillar v Cuthbert the Caterpillar, another of M&S’ sweet treats, Percy Pig, recently made the news after M&S sent a letter to Fabio’s Gelato (a gelateria in Hitchin and Letchworth) regarding its Perky Pig gelato.
Fabio’s Gelato states on its About Us webpage that it has “created over 500 ever-changing flavors of Gelato, Sorbets & Vegan Gelato”. On 2 May 2023, it announced a new flavor on Facebook with an image of gelato with Percy Pig sweets on the top. In a later post, Fabio’s Gelato referred to the flavor as Perky Pig.
M&S has UK trademarks for PERCY PIG for goods such as “confectionery” and “ice cream” and has Percy Pig branded ice cream.
M&S wrote to Fabio’s Gelato explaining that it was “flattered” that Percy Pig was the inspiration but requested that Fabio’s Gelato changed the name of the flavor. This was because the trademarks were important in helping avoid consumers being unsure if Percy Pig products came from M&S. M&S made clear that it was not objecting to the gelato flavor or the use of the Percy Pig sweets in the ice cream. M&S also provided some packets of the sweets with its letter.
Fabio’s Gelato changed the name of the flavor to Fabios Pig and subsequently launched a competition for a new name. The winning name appears to be Notorious P.I.G (according to its Facebook page). It will be interesting to see if M&S would consider the style and colours (pink, white and black) used for the new label for Notorious P.I.G to be similar to that used for its Percy Pig products and whether it sends another letter.
M&S has been attracting publicity recently for enforcing its intellectual property rights, including in relation to Colin the Caterpillar and its light-up gin bottle. It can be beneficial having a reputation for enforcing intellectual property rights, as it can make potential infringers think twice before imitating your brand or product.
However, this should be balanced with the risk of potential negative publicity (in this case, the potential risk of the story being presented as a huge retailer going after a small family business). This may explain why the M&S letter appears to be worded in a relatively conciliatory and non-aggressive way.
This case also shows the benefit of having registered trademarks. Although we cannot see the full letter on the Facebook post of Fabio’s Gelato, it appears that M&S only relied on trademark rights and not, for example, any potential passing off (an unregistered right). It is easier to prove that you have trademark rights as you would have a registration certificate whereas passing off includes having to prove goodwill (in this case in the name Percy Pig).
Therefore, you should regularly review your trademark portfolio to check that you have sufficient coverage for your goods/services and the territories where you operate. Nonetheless, there may be times when only unregistered rights are available, so it is important to keep detailed records so that you can prove the existence and ownership of such rights.
Written by Scott Steinberg, Senior Associate, Fox Williams.