Ellis Sweetenham, Solicitor at Lawdit SolicitorsMarks & Spencer (M&S) have made a U-turn after a new product ‘rips off’ the name of a London pub.

Founded in 1884, M&S has grown into a household name as the multinational retailer selling a wide range of products including food, homeware, and clothing. The brand has become well known and respected for its quality products.

It seems that even a business celebrating its 139th birthday this year can still fall foul of intellectual property laws.

Recently, M&S revealed a new t-shirt design available to purchase on their site. This t-shirt was listed as a Brewery graphic t-shirt and featured the wording ‘Craft Beer Co’ on the front and back of the shirt.

Once the product went on sale, noise began on social media about the design.

From its official Twitter account, the pub chain the Craft Beer Co tweeted M&S to raise its issues.

In its tweet, Craft Beer Co called out M&S for using its brand name as part of the design without authority or even any prior warning.

The tweet included an image of the design and said:

“Hey @marksandspencer

what’s the idea with these T shirts!?

Can we expect a royalties cheque in the post!?

Surely one Iconic British Institution shouldn’t be ripping off another…!!?”

The Craft Beer Co was established in 2011 and has a chain of pubs across London and in Brighton. It describes itself as London’s Original Craft Beer Led Pub Company.

On discovery of the tweets and the noise following on social media, M&S confirmed that the product would be removed from sale while they investigate the matter further.

Craft Beer Co do not hold a registered trademark for the name or their logos, but this would not necessarily prevent them from taking legal action.

In the UK, under the law of Passing Off, an entity can take action against another for using an identical or highly similar brand without a registered trademark. Passing Off gives protection against unfair imitation.

In order to be successful in a claim for Passing Off, the following elements need to be proven:

  1. They would need to establish a goodwill or reputation attached to the goods or services supplied;
  2. They must demonstrate a misrepresentation by M&S to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by them are the goods or services of Craft Beer Co; and
  3. They must demonstrate that they have suffered or are likely to suffer damage as a result of the misrepresentation by M&S.

While Craft Beer Co have confirmed they are unlikely to take legal action against a big corporation such as M&S, it may be an option for them. This is dependent on whether they can provide sufficient evidence of their goodwill and reputation and also prove whether there had been a misrepresentation of their brand, which has caused them damage.

The matter seems to be over and done with, now the T-shirt has been removed from sale, but it will be interesting to see if M&S choose to fight back after some investigation.

Written by Ellis Sweetenham, Solicitor, Lawdit Solicitors

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