M&S in craft beer trade mark bungle

Marks & Spencer has removed a T-shirt from sale after The Craft Beer Co. accused the retailer of “ripping off” its trade mark.

A T-shirt sold by Marks & Spencer featuring the words “Craft Beer Co.” on the front and back of the garment in a similar font to that used by the London pub chain has been pulled from sale.

Martin Hayes and Peter Slezak, who run The Craft Beer Co., which includes seven pubs in London and one in Brighton, tweeted the retailer on Thursday asking: “What’s the idea with these T-shirts!? Can we expect a royalties cheque in the post? Surely one iconic British institution shouldn’t be ripping off another….!!”

In a statement, a spokesperson from Marks & Spencer announced: “We take intellectual property very seriously and, while the T-shirt was designed in good faith, we’ve taken the decision to remove the product from sale so we can investigate further.”

Hayes told the BBC: “I’m not angry about it, but it is a little annoying. I’ve got a lot of respect for M&S… I think somebody’s just made a bit of a boo boo really, but I’m sure it will be sorted out.”

The Craft Beer Co. has no plans to sue, said Hayes.

However, if its owners did decide to litigate then according to Dale Carter, trademark partner at intellectual property law firm Reddie & Grose LLP, they could be in with a fighting chance.

“In the past M&S have sold third-party beer brands and commissioned special beers from known breweries and sold these via their store,” Carter said. “Thus, M&S have a history of collaborating with beer manufacturers. Therefore, it is possible that consumers may believe the T-shirts with ‘Craft Beer Co.’ were linked to a certain brewery and thus, consumer confusion may arise if they are under the false impression that there is a link between M&S and The Craft Beer Co.”

The Craft Beer Co.’s success in a potential infringement lawsuit, said Carter, would hinge on how strong its own trade mark registration and reputation is.

“It would likely be possible for The Craft Beer Co. to succeed in an infringement action against M&S for a registration covering only ‘beer’, if they were able to prove that their registered trade mark enjoys a reputation in the UK,” he said. “Proving a reputation, however, is not a simple task. Trade mark infringement actions are costly and providing evidence of reputation to support this claim would increase the costs significantly.”

Alternatively, Carter suggests, if The Craft Beer Co. owns a UK registered trade mark for ‘Craft Beer Co.’ or their Craft Beer Co. logo covering the area of ‘clothing’ then “the registration would be stronger and more robust that a registration for the same mark covering ‘beers’. The Craft Beer Co. would, on the face of it, have a stronger case to stop third parties using the same or a similar mark on clothing.”

If The Craft Beer Co. does not currently own a registered trade mark, it would be difficult to enforce any rights against M&S’s use of ‘Craft Beer Co.’ on a T-shirt, explained Carter, “because of the different nature of the goods between beer and clothing”.