When Matalan launched a range of hoodies branded ‘Rebel attitude,’ competitor Primark was on its back claiming a monopoly right in kids’ clothing using the word ‘Rebel.’ Can it claim this and on what legal grounds?
Topic: Trade Marks
Who: Matalan and Primark
Where: High Court
When: September 2006
What happened:
Primark, the budget fashion giant owned by Associated British Foods, has taken on its rival Matalan in a battle over the sale of the clothing item, which is a “must have” for every self-respecting chav in Britain; the notorious “hoodie”.
Primark sells children’s clothing which includes the word “rebel”. Primark Holdings has registered the trade mark “rebel” in respect of classes 18, 24, 25, 28. The class 25 registration covers articles of clothing, footwear and headgear. By way of background, Primark Holdings and Primark Stores Limited conduct their business, under the name Primark Stores Limited in the UK, and under the names Primark and Prima in the Republic of Ireland.
Matalan’s launch of a range of hoodies branded with the words “rebel attitude” appears to have been the catalyst here. Primark claims that customers will be tricked into believing that the hoodies sold by Matalan are really Primark products and is insisting that it has the exclusive right to sell children’s clothes using the “rebel” branding. Primark is seeking two remedies: a) Matalan destroys the “rebel” hoodies and; b) pays out a substantial sum to Primark is respect of damages. To give you a broader picture, Matalan and Primark sell clothing at a margin of the cost charged by other high street retailers. For example, the hoodies in this case cost £4 each.
Interestingly, Primark Holdings’ attempt to register the word “rebel” in respect of class 25 as a Community Trade Mark, which would have afforded it protection across the all the countries in the European Community, was successfully opposed in 1999 by owners of earlier Benelux and French registrations.
Primark is no stranger to legal actions relating to intellectual property rights, however, in the past, the shoe has been on the other foot. Back in March 2005, the high street retailer H&M accused Primark of copying a number of its designs. In the following April, Monsoon instigated a £200,000 action for damages against Primark over claims that Primark had copied 6 of Monsoon’s best-selling products.
Why this matters:
A mark registered under trade mark legislation is a property right. In the UK, this right is infringed if the registered mark is used by a party other than the registered owner, without the registered owner’s permission, in the course of trade. This is irrespective of whether or not the potential infringer knew of the trade mark registration. The mark registered by Primark Holdings is the word “rebel”. The mark used on Matalan’s hoodies is “rebel attitude”.
Using a mark that is identical to the registered mark in respect of identical goods will always be considered an infringement. However, if using a mark that is identical or similar to the registered mark for similar goods, the registrant will have to show that there is likelihood of confusion between the marks in the public mind. In this case the marks are not identical, therefore, in order to establish trade mark infringement, there must be a likelihood that customers will be confused into thinking that a hoodie with the words “rebel attitude” is a Primark product.
Is a customer, who walks into a Matalan store, likely to believe that the hoodies displayed are Primark products, purely because of the inclusion of the word “rebel” in the larger mark “rebel attitude”? It will be interesting to see whether the parties agree to settle this matter out of court.
