Just when you have made a resolution to concentrate on the major issues of the day, something comes along to distract your attention. Yes we are still talking about trade mark and brand issues but today its about a trade mark action brought by adult party brand Butlers in the Buff (BITB). According to the report in the Bristol Post the well-known business that has over 1000 men ‘on its books’ ready to serve cocktails and canapes and play party games. With a trading history going back to 2001 and considerable growth both here and internationally, BITB has taken issue against a new rival calling itself Bufflers.
Offering similar services to BITB there was a serious threat of them damaging BITB’s business. So BITB decided they had to go on the attack and launched an action against Bluffers for trade mark infringement and passing off.
Butlers in the Buff have a registered trade mark protecting butlering services, the serving of drink and entertainment as well as clothing. Bluffers is not an identical mark, BITB would have needed to show that there was a strong likelihood of confusion between their business and Bluffers and that as a result they were likely to suffer loss and damage. Butlers in the Buff has been successful and Bufflers must change its name, although as of this morning it was still in use on their website. Well I do of course need to check the facts!!
What we have learnt
This is good example of a business that has protected its rights and taken action where it needed to prevent a newcomer from taking unfair advantage of the goodwill and reputation they have in the market. The fact they had a registered trade mark is a great help to the cause but it will also have been necessary to demonstrate their longstanding business in this field and the recognition they have for their brand. This second part, is a time consuming exercise and can deter businesses from taking action. Part of a good IP strategy would be to make sure that you keep an archive of material showing your use of the mark and reputation, to include financial records of trade, marketing and advertising literature and spend, business or customer reviews and newspaper or online articles about your business. In a typical business only some of this material is routinely kept in the archive to deal with just this sort of situation but having a plan to retain it and in one place can be helpful when action is required.
Well done Butlers in the Buff on your success! The only question I have is what the trade mark registration under class 25 for clothing is used for?
Written by Margaret Briffa, Solicitor