Use It. Defend It. Strengthen It.

Trademark enforcement is essential to maintaining and strengthening a brand.

It’s necessary to challenge third parties who infringe or otherwise trespass on your rights. So, taking action against copycats or lookalikes is the way to maintain and establish your brand’s reputation and uniqueness.

Adidas is a well-known example of a business that has firmly and consistently enforced its brand over the years.

It’s not just advertising and promotion that have resulted in the three stripes becoming synonymous with the Adidas name. It’s also due to the company’s diligent protection of its brand over the years. That’s why the company is uniquely associated with three stripes.

Adidas has managed to enhance the scope of its brand primarily due to its strong enforcement of its trademark rights. Over the past decades it has been willing to litigate to ward off any attempts by third parties to use similar brand elements to its three stripes. This strategy has gradually sent a clear message to the market to not come too close to the Adidas mark. That reputation for litigiousness deters many potential imitators.

Indeed, when an early logo designed for Tesla was challenged for its similarity to the Adidas three stripes, Elon Musk chose to change the design rather than fight Adidas. That wasn’t necessarily because Adidas would have won, but because even well-funded companies prefer to avoid the time, cost and uncertainty of litigation if they can avoid it. So, that’s how Adidas’ enforcement strategy achieves its purpose of ensuring the business uniquely comes to mind when people see three stripes.

Similarly, Stelios Haji-Ioannou, founder of easyJet and owner of easyGroup, has enlarged the scope of the word “easy”. His family of brands consistently challenges uses of the word “easy” across different sectors. Doing so has strengthened the brand because other businesses are reluctant to adopt names incorporating “easy” in case they are challenged by easyGroup. 

However, sometimes businesses decide to fight back when it’s important to them to be able to use the word “easy”. This happened recently when Premier Inn, the UK hotel chain owned by Whitbread, decided to defend the legal action against its phrase “Rest easy” in advertising and promotion campaigns. 

 Lawyers representing easyGroup alleged that Premier Inn’s advertising infringed trademarks including "easyHotel" and "Rest Easy Apartments". They complained that Premier Inn's words could cause confusion.

In dismissing the case, the High Court found that “rest easy” is an ordinary English expression and that consumers would not assume a connection with easyGroup’s brands. In other words, the law did not support extending exclusive rights in the word “easy” to cover a common phrase used descriptively in hotel advertising.

The Premier Inn decision is a reminder that while a reputation for litigiousness can deter many competitors, it requires a substantial litigation budget behind it. Sometimes it will be necessary to fully argue a case before a court, and that is a costly exercise.

The outcome of trademark disputes ultimately depends on the law and the facts, not on how assertive a brand owner has been in the past. 

While in previous newsletters we have stressed the importance of being able to prove use of trademarks to maintain rights, this is a reminder about the importance of defending trademarks to secure and strengthen a brand.

So, if you receive a notification of another business applying to register a similar mark to yours think carefully whether consumers could be confused, or whether it might reduce your name recognition if they’re allowed to co-exist. If so, then it’s worth dedicating a budget to opposing such applications.