Along with ASA and Portman Group disquiet at the launch of fcuk pre-mixed drinks, the fashion retailer also has to deal with a wine seller’s registered “French Connection” brand.
Who: French Conn Who: French Connection UK Ltd and Bottle Green Ltd
When: November 2001
Where: UK Patent Office, London
French Connection UK (“FCUK”) recently announced its plans to launch a range of “fcuk” alcoholic pre-mixed drinks through a partnership with Matthew Clark Brands. Shortly afterwards, the fashion retailer also announced that it was engaged in discussions with the UK Patent office concerning an existing, third party-owned alcoholic drink brand which the retailer felt might confuse consumers. As yet, the nature of the discussions or any legal action or proceeding that might be contemplated is unclear, but what is clear is that the third party in question is a company called Bottle Green Ltd (“BGL”). BGL has indeed a considerable interest in the "French Connection" name. In 1998 it successfully registered it as a trade mark in the UK. The registration was in respect of what may turn out to be a problematically wide class of products, namely “alcoholic beverages (excluding beers).” It followed this in July 2001 with an application to register the same mark in the same class of goods across Europe, by way of a Community Trade Mark. In the marketplace, BGL’s main use of the “French Connection” brand has been in respect of a range of wines, which is evidently where FCUK have a problem and are asking BGL to cease use of the “French Connection” name.
Why this matters:
Although the Advertising Standards Authority and the alcoholic drink marketing watchdog the Portman Group have recently expressed certain negative views about the use of the “fcuk” brand in the sector, this is clearly not the root of the problem FCUK have with BGL. It is more the clothes retailer’s fear that particularly now it is moving into the alcoholic drinks market, punters who see “French Connection” wine will imagine it is just another piece of FCUK brand extension. As for legal remedies, it seems unlikely the Patent office/Trade Marks Registry will have any major role to play at this stage. The BGL registration in the UK has been in place for nearly four years. This means that it is going to be difficult to challenge it in the Registry except on grounds of non-use. This is the rule that unless a registered mark is actually used on all the products it is registered for, the registration can be lost. In this case this might mean, assuming for a moment BGL have only used the “French Connection” brand on wine, that they lost their registration for all “alcoholic beverages” except beer, leaving only a registration for wine. FCUK’s big problem here, however, is that a minimum of five years’ non-use must be shown since the registration was in place, so on the face of it they cannot even begin to run this argument until 2003 at the earliest. The alternative is good old “passing off”, but this is more likely to be a matter for the courts, and FCUK will know the difficulties in establishing a case on this ground, particularly where, their opponents may have been active in the sector for a good deal longer than FCUK.