When I registered my baby goods brand “BabyCrate” in the United Kingdom I was not expecting any trouble. I had conducted an extensive search for similar names in the WIPO International Brand Database and even used the UK Trademark “Right Start” Scheme to ensure that my application was in order. Once my Mark was registered, I felt that I had done the absolute minimum to protect my venture from fakes and knock-offs. I was happy.
Almost two months later, however, my happiness was somewhat dampened. I received a “notice of threatened opposition” regarding my trademark application from Euromarket Designs, inc. a fully-owned subsidiary of the German Otto Group and owner of the “Crate & Barrel” mark. Having lived in Europe all my life, I had never heard of Crate & Barrel. In any case, I thought, “Crate & Barrel” is substantially different from “BabyCrate”. I did learn though that as I was seeking to protect the BabyCrate mark for furniture, which is an area covered by the “Crate & Barrel” Mark, the threshold for similarity of marks is quite low. The question is as to whether the two marks are “audibly, visually or conceptually similar”. This gave me confidence. On the face of it, “BabyCrate” and “Crate & Barrel” have very different appearances, they sound differently, and babies are clearly not to be confused with barrels.
I thought they were just trying to scare me off by the threat of a potentially long and expensive legal case. But, as I was certain they don’t have a leg to stand on, I decided to proceed with the registration. I secretly hoped they would recognize the weakness of their case and just go away.
How naive this proved to be. Some time later, I received a 22-page document prepared by a specialist Intellectual Property and Trademark law firm with offices in several major European Cities who on their web page advertise their “bold advocacy” for their clients. In this document it was detailed why, should the registration of BabyCrate be allowed to proceed, there would be great consumer confusion in the United Kingdom. Indeed, apparently this confusion would even extend to Crate & Barrel itself, as it would go so far as to weaken their ability to identify their own goods.
Although in my view the arguments in this document range from without merit to disingenuous, I was now faced with a dilemma. If Euromarket Designs are willing to deploy the big guns here, what options do I have? My young brand BabyCrate generates somewhat smaller revenues than the 12.5bn a year generated by Otto Group.
As Euromarket Designs was not only seeking to block the registration of the BabyCrate for furniture but also for clothing, even though the Crate & Barrel mark does not even cover these goods, the question I was forced to pose myself was quite simply, “should I abandon my brand and start again?”
I decided to fight. I have put a lot of time and effort into getting BabyCrate started. I like the BabyCrate brand and I want it to succeed. “Crate & Barrel” may have the big pockets and the top lawyers, but they ultimately do not have very strong arguments. Not only are the Trade Marks dissimilar, but Crate & Barrel does not, as far as I can tell, sell any apparel or clothing whatsoever, for babies or otherwise. The baby furniture they do stock does not retail under the Crate & Barrel brand, but under a subsidiary brand, “The Land of Nod”. Additionally, the only BabyCrate furniture product is quite unique and distinctive, reducing any potential for confusion.
Unfortunately, hiring professional representation would have eaten up a large chunk of my new businesses resources, so this was not an option. I did do an introductory law course at University a while back, so I decided to write up a response myself. I mostly focused on the argument that the lack of similarity between the two Trademarks limits any potential for confusion.
Will my arguments stand up to legal scrutiny? I certainly hope so. But what if they appeal?
The witness statement I received just over a week ago gave me a hint of where to look to understand the motivation of Euromarket Designs in pursuing this case:
“In the Euromarket Marks, the word ‘crate’ is the first element of our trade mark, and name, and we give greater prominence to this element. Indeed, if you run a Google search for ‘CRATE AND BARREL’ our company name appears with just the word CRATE.”
I then learned that Euromarket Designs recently registered the trademark “Crate” in the United States, for classes 35 “Advertising and Business Services”, as well as 41 “Education and Entertainment Services”. Apparently they are trying to drop the barrel. At this time, the mark Crate covers only limited areas. However, once usage has been established they may extend the protection of the word to areas currently covered by the Crate & Barrel mark. In the UK this includes classes 4,7,8,9,11,14,16,18,20,21,24,27,28,29,30 and 35, a list comprising applications as varied as “industrial oils & greases”, “meat extracts”, and, potentially most fittingly, “whips”. All this for an operation which has no physical presence in the UK, and where annual revenues amount to less than £200k.
Maybe BabyCrate is seen as a potential future barrier to their registering of the word “Crate” in the United Kingdom. On the other hand, as there are over 200 Trademarks in the UK containing “crate”, of which around 30 cover furniture, it is difficult to see what they would really be achieving should they succeed in blocking my registration.
Whilst I do understand that successfully trademarking common English words ultimately makes good business sense, I do also feel bullied and unfairly targeted by Euromarket Designs. Whilst I am confident in the merits of my case, I would much prefer to just be able to get down to business.
So, Crate & Barrel, Euromarket Designs and Otto Group, if you are reading this please give me a call so that we can sort this out amicably.