Own-it | Intellectual Property Know-How for Creative Businesses

One for the little guy

One for the little guy

Published: 04.04.12 at 17:30

The general consensus seems to be that there is no point taking on a legal suit brought by a global powerhouse; their financial clout means you have little chance of winning. While pursuing or defending a claim against a multinational corporation will be daunting, a recent case shows that where there's a will there's a way.

D&G Autocare, a Scottish garage chain became lodged in a legal battle when it tried to register its company name as a UK trade mark. The owners of the business, David Hunter and George Simpson, chose this name after their first name initials. However, the pair received a letter from the Italian company, Dolce and Gabbana, stating that the company would be disputing the registration.

D&G Autocare decided to take Dolce and Gabbana on despite the fact that the Milan-based fashion house has an annual turnover of around €6 million.

Dolce & Gabbana had registered the D&G mark in a number of classes of goods and services including one which covered a range of motor related goods and services. At first glance it seemed as though the underdog stood little chance and had no choice but to come up with a different name for the business.

But Autocare's lawyer called Dolce & Gabbana's bluff and asked for proof that it used the trade mark in this class - a trade mark can be revoked or declared invalid for non-use for a continuous period of five years. Dolce and Gabbana then agreed not to object to the car firm's use of the trade mark, as long as it did not attempt to register it outside of the UK. The trade mark has now been officially granted the without objection.

Mr Simpson, on behalf of the duo, said that they were "over the moon" by the eventual outcome.

"All we wanted to do was protect our own brand because we're trying to expand the business. It has been very time consuming and expensive but it has been worth it, although sometimes it has felt like another D&G - David and Goliath."

He added: "We're just two guys who own a few garages so taking on such a massive global name was obviously quite daunting. When we received the letter, we did panic a bit and I know some people would have backed down, but we decided we weren't going to do that."

"Our solicitor was absolutely fantastic and we're really grateful to him. Everyone knows Dolce and Gabbana wouldn't be doing MOTs in Fife!"

See this story as it appeared in the Scottish Legal News.

Article by Joe Walsh

Photograph (some rights reserved) by rakka

 

Please note that this article discusses the legal position in the UK at the time of publication. It provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.

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