The jewellery shop chain formerly known as Ratner was not impressed by the eponymous former chairman’s plans for a “Ratner online” jewellery website.
Who: Signet and Gerald Ratner
When: The UK
In May 2002 the former Ratner Group chairman Gerald Ratner, who resigned from the Group 10 years ago after describing some of the Group's products as "total crap", announced his decision to return to jewellery retail by setting up a website known as "Ratner Online". Although the Ratner Group dropped the Ratner name from its stores after Gerald’s exit, re-dubbing itself "Signet", the company was still unimpressed to hear of Mr Ratner's plans. Relying at least in part on its registration as a trade mark of the brand name RATNERS in respect of "watches and jewellery", Signet sued Gerald for trade mark infringement, seeking an immediate injunction preventing any use by Gerald of the "Ratner" name. In retaliation, Gerald put it about that he was challenging the RATNERS trade mark registration on grounds of 5 years’ non-use, but shortly afterwards a settlement was announced whereby Gerald agreed not to use the brand name "Ratner Online" or to in any other way infringe the RATNERS trade mark. The settlement agreement does, however, allow Gerald to use his surname on the site subject to restrictions as to its prominence. It is thought that Signet were particularly keen to take action against Gerald in the light of the support he had been given in his new enterprise by Signet rivals Goldsmiths.
Why this matters:
It is often wrongly believed that regardless of who might have registered a brand name as a trade mark, anybody who happens to have a surname which is the same as that brand can use that surname in connection with their own business. As this case shows, this will not necessarily be the case. There are certain defences which can be run in these circumstances based on the use of one's own name in good faith, but each case, as they say, turns on its own facts, and clearly in this particular instance Gerald's own name defence to the Signet claim was not as strong as it might have been.
The case also highlights the vulnerability of any registered brand to being struck off the trade mark register if it has not been used for 5 years. Although Signet had dropped all use on retail premises of the "Ratner" name soon after Gerald's embarrassing remarks, they clearly had some potential to argue that there was a degree of use still being made of the Ratner brand name within 5 years before this particular row blew up. Brand owners should always bear in mind therefore that having a brand on the trade mark register is not enough. It is always essential to maintain a level of use of that brand and to keep records of that use including, for instance, marketing spend behind material promoting the brand. That way, any challenge to the mark's validity on grounds of non-use can be successfully opposed using clear, documentary evidence of use.