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A recent dispute highlights the importance of protecting your IP

8th February 2017

This week The Intellectual Property Office published the decision on the trade mark dispute over Glasgow’s popular Willow Tea Rooms. The business had been operated since 1983 from its Sauchiehall Street branch by Anne Mulhern, who shifted premises last year after the building designed by Charles Rennie Mackintosh on Sauchiehall Street was acquired by the Willow Team Rooms Trust.

Under the Trade Marks Act 1994, Ms Mulhern opposed the trust’s application to register ‘The Willow Tea Rooms’ as a trade mark on the basis of the similarity with her own previously registered marks and that this would create confusion amongst customers and be detrimental to the distinctive character and reputation of those marks. The trust sought to argue the goodwill in the name related to the building and not to the business which had been carried on there. The IPO found in favour of Ms Mulhern in the majority of the types of goods and services in which the trust sought to register the trade mark, stating, in relation to some services, that there was a direct likelihood of confusion and that even if the building was known as The Willow Tea Rooms in the past, that did not give the trust the right to ‘hijack’ the mark of a business that had been operating under that mark for over 30 years.

The decision highlights the importance for businesses of all stages on implementing a brand protection strategy involving identification and registration of marks and pursuance of perceived threats to them. For further information or advice on protecting your IP contact Morisons Business Team.

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