July 2021 News

Dogfight in the Trade Marks Registry

The case of the Northern Inuit Society

It was an obvious choice of what to write about for this newsletter; after slightly over 18 months of work, we’ve just secured a victory on behalf of our client the Northern Inuit Society against the Peoples’ Front of… sorry, my mistake, the Northern Inuit Association…

A new breed of dog

You’ve probably seen some Northern Inuits, despite the fact that they’re only a relatively recent breed of dog.  The breed was developed in the 1980s to the point where it was stable, following which the original breeder set up a governing body to place the breed on a secure footing.  The main task was to maintain the pedigree records needed to ensure that new pups were healthy, but the Society would also grow to provide a social forum for owners, organising shows and events.  Its first job was to choose a name for the breed, and it settled on ‘Northern Inuit’.  The logical choice of name for the body, then, was the Northern Inuit Society…
The dogs became rather better known from 2011, when they were cast as the direwolves in ‘Game of Thrones’.  Having been bred to look like a wolf but have a gentle temperament, they were ideal for an acting role where the script called for wolf-like animals but the human actors and crew weren’t expendable. 

Case arising

Things went smoothly until 2019, when a minority on the Society’s committee decided that things ought to be run differently.  Unable to persuade others, they split off to form a rival group. That’s absolutely fine, of course, except that they chose to call it the “Northern Inuit Association”, and registered the mark at the UK Intellectual Property Office.  It was at that stage that the Society approached us and asked for help.  We applied to cancel the registration – in our view the marks NORTHERN INUIT SOCIETY and NORTHERN INUIT ASSOCIATION were highly similar, which meant that the Association’s registration was invalid but (whilst on the register) presented a threat to the Society.  The names were so similar, in fact, that for a long time I had to resort to putting Post-It™ notes in prominent places to remind me which side I was acting for!
Sadly, the Association resisted the move and therefore we had to gather evidence of the history of the breed, the history of the Society, and the Society’s activities and recognition, to prove that the Society was sufficiently well-known as of 2019 that the Association’s actions would create a likelihood of confusion. This was because the Society had never registered its name as a trade mark, so we had to rely on the common law concept of “passing-off”.  With tremendous help from the Society and its supporters, we managed to assemble the evidence and in June this year the Registry issued its decision – that the Society did indeed have a goodwill in its name, which would be damaged as a result of the Association’s usage. 
It’s a potentially important decision in that a goodwill was recognised despite the Society only having a small financial turnover.  Usually, passing-off is the preserve of substantial enterprises that can demonstrate the necessary recognition through high sales turnover over a substantial period of time.  The Society had the time but not the sales; we argued that the relevant consumers were owners, purchasers and breeders of Northern Inuit dogs and that within that field the Society was very well-known indeed.  There was also a line of past precedents in which charities had relied on the law of passing-off to protect their names – they obviously have recognition but might not necessarily have substantial ‘sales’.  That carried the day, and the Registry ordered that the Association’s registration be cancelled and that they make a contribution to the Society’s costs. 

Recommendations for organisation leaders and business owners

Is there a lesson to be learned here?  Absolutely – two, in fact.  The first is one that I can often be heard shouting to the rooftops – register your trade mark! I can well understand a small and close-knit society thinking that it was an unnecessary expense, but the time to do it is early on before there are any fallings-out.  Had the mark been registered, the outcome would have been the same, but much quicker and cheaper.  Second, if you disagree and want to set up on your own, by all means do – but choose a different name!

Further reading

The Northern Inuits Society
IPO trade mark decision

Until next time.

Best Wishes
Michael Downing

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