On the eve of the launch of Barclays’ long awaited ‘Inventive spirit’ campaign, an East Midlands accountancy practice applied to register the very same strap line that was the centrepiece of the bank’s new branding.
Who: Barclays Bank and Cooper Parry
Where: The Chancery Division of the High Court of England and Wales
When: October 2005
Barclays Bank launched its long awaited new advertising campaign, showcasing its new "Inventive spirit" brand positioning. Unfortunately the spirit behind the creation of the campaign featuring the strap-line "Now there's a thought" was not that inventive.
East Midlands accountants, Cooper Parry, had already been there. Indeed, Cooper Parry said that they had been using the strap-line for five years, although as is clear from the UK trademark register, it was not until 10 October 2005, literally as the Barclays campaign launched, that they filed an application to register "Now there's a thought" as a trademark.
The Cooper Parry application was in respect of a range of goods and services including financial management and valuation services, book-keeping, tax advice and financial management, but not banking services.
Because Cooper Parry's trademark registration application was only pending, they could not rely on this in any claim against Barclays. But this did not stop them. They still issued proceedings against Barclays very quickly after the Barclays campaign launch. They also applied immediately to Chancery for an interim injunction preventing Barclay's further use of the strap-line until trial. The claim was made on grounds of passing off.
Passing off argument:
In passing off, even though branding has not been registered, the brand's owner can prevent others using anything similar if he can show that as a result of his use of the branding over a period of time, it has become distinctive of the business he operates under that brand. He must also show that because of this distinctiveness, for anybody else to use it gives rise to a risk of confusion and damage to his business.
Barclays defended the Cooper Parry proceedings and evidently the Court was not sufficiently persuaded of the merits of Cooper Parry's case to grant an immediate injunction. The judge did, however, grant an order for a speedy trial so that the matter could be resolved without unnecessary delays. In the meantime, Barclays were able to continue using the strap-line.
Within a few days after this, it was announced that an out of court settlement had been reached. This allowed Barclays to continue using the strap-line, whilst Cooper Parry was reported as "considering its future use of the slogan".
What this matters:
Clearly, Barclays would have devised its campaign and the strap-line long before Cooper Parry filed their application to register the phrase as their trademark. But in these circumstances, how were Barclays to know that there was an accountancy firm out there making apparently heavy use of exactly the same branding?
We cannot know at this stage whether other searches, for instance, keying the phrase into Google, would have revealed all. Also, full "common law" searches are imperfect, but the skilled searcher should know where to look and would surely in the ordinary course have picked up Cooper Parry's usage if it was all it was cracked up to be.
What actually happened in terms of the searches conducted by Barclays when the campaign was at concept stage and what advice might have been given will probably never be revealed, but the case underlines the fact that no advertising campaign using a particular strap-line should be finalised without suitable searches, and that even then, if the branding is not the subject of a trademark application, there could be a residual risk that use by a third party may go unnoticed, by even the most diligent searcher.