On 27 March 2023, Adidas filed an opposition against a US trade mark application for a figurative trade mark comprising three parallel stripes filed by the Black Lives Matter Foundation. Just three days later, the opposition was withdrawn.
Reuters reported a source close to the company as saying that Adidas withdrew the opposition because the company had concerns that the opposition could be misinterpreted as criticism of the Black Lives Matter movement. Their fears may have been justified – you only need to skim-read the comments under the many LinkedIn, Twitter and Facebook posts reporting the initial opposition to see that many viewed the opposition as a bad PR move.
What potential consequences did Adidas have in store had they continued with the opposition? In this article I take a look at some high-profile trade mark disputes and how they played out in the public eye.
“David and Goliath” is an oft-used phrase in headlines and articles reporting on trade mark disputes between “big, bad corporations” and small businesses or individuals. Whilst media commentary may have no bearing on the case in the courts, public perception is, of course, important to brand owners. The Oatly v PureOaty trade mark infringement dispute is a recent case that comes to mind when thinking about “David and Goliath” style disputes.
The case was covered extensively in the media when Oatly AB sued Glebe Farms, the family run Cambridgeshire company responsible for the PureOaty brand of oat milk. Glebe Farms spoke openly about the proceedings, and in an official statement commented that “there are deeper principles at play here for us as a family farming business in wanting to challenge back”. This comment no doubt added fuel to the fires of those who accused Oatly of being a corporate bully. Over 130,000 people signed a petition demanding that Oatly drop the case, citing their “aggressive” and unnecessary behaviour. Many people commenting on the petition said that they were boycotting Oatly due to the dispute. The Grocer, a popular digital magazine in the food and drinks sector, noted this event as one of Oatly’s “top PR fails”. Some of the general public viewed the infringement case as an attempt by Oatly stop others from using the word “oat”, as that was the only common element that they could see between the two names. Whilst this view greatly simplifies the facts of the case, it raises an interesting question: would the public view be different if Oatly had chosen a brand name that wasn’t mainly comprised of a word that is descriptive of the goods?
BrewDog is another company that faced criticism, after it sent a cease and desist letter to an independent Birmingham pub named “Lone Wolf”, the same name as one of BrewDog’s products. BrewDog were accused of being a corporate machine and encountered backlash, after the owners of the pub changed its name for fear of legal action. Like Adidas, BrewDog retreated, announcing that the pub could in fact keep its name, tweeting that their own lawyers “got a bit trigger happy” and apologising for their lawyers’ actions.
Before their U-turn, BrewDog were branded as hypocrites as their “corporate-like attitude” toward the independent pub was seen to be at odds with the ethos of their company that their founders said was established because they were “fed up of the stuffy UK beer market”. The public often call out hypocrisy when they see it, as they did with the news of Adidas’s opposition to the Black Lives Matter trade mark application – Adidas’s previous press releases in support of Black Lives Matter were cited. In the Glebe Farms case, Oatly were urged to follow their own mission to “help people upgrade their everyday lives and the health of the planet” when they were seen to attack a company whose goal was also to create a sustainable plant-based product. When seeking to enforce rights, brand owners may want to consider if their actions align with their company ethos or values.
As we can see from the above cases, it seems that when a small company innocently adopts a name that is the subject of a legal dispute, the media and public are likely to side with the underdog. Of course, brand owners should not be discouraged from protecting their IP rights, but how can they do it in a way that does not garner negative publicity?
Netflix is a company that got it right in one instance, when “The Upside Down”, a small pop-up bar created with the theme of Netflix’s hit TV show Stranger Things, opened in Chicago without Netflix’s consent. Netflix sent to the owner of the bar a cease and desist letter which included plenty of humorous Stranger Things references, politely asking the owners not to extend past their 6-week opening schedule, and to ask for Netflix’s permission before opening the bar again. The letter was described as “nerdy, yet firm”, and the owner of the bar emphasised that there were no hard feelings. Netflix’s approach seems to have struck the right balance between respecting the fans of one of their biggest TV shows, and protecting their IP rights. This can be a tough line to walk, as Lego found in 2019 in a spat with a famous German YouTuber.
Thomas Panke (also known as “Held der Steine”, meaning “Hero of the Bricks”) runs a popular German YouTube channel and a small toy shop in Frankfurt. Up until 2019, Mr Panke’s YouTube channel exclusively discussed Lego products. Mr Panke was often referred to as the biggest Lego influencer in Germany (which, by the way, is Lego’s biggest national market). One can imagine Mr Panke’s and his followers’ reaction when he received a letter from Lego’s legal representatives demanding that he, amongst other things, withdraw his trade mark application which included a brick device that Lego believed to be similar to its own. Mr Panke immediately took to his YouTube channel to broadcast the letter and Lego’s demands, a video which now has over 2 million views. Commentary on social media was critical of Lego for their action, particularly the harsh approach taken against a loyal Lego fan and retailer. Later, Frédéric Lehmann, the manager of Lego Germany, admitted that Lego did not communicate properly in this case, and that perhaps a phone call would have been more appropriate than a formal letter.
In an age where the internet allows everyone to have their say, the court of public opinion is more powerful than ever before. When seeking to enforce rights, owners should consider how their approach and actions may be perceived by the public, the risk of damage to their reputation and any steps that can be taken to mitigate negative publicity. Perhaps we can learn from Aldi, whose twitter feed during a battle with M&S over a well-known chocolate caterpillar cake generated plenty of positive PR, causing much of the public to side with Aldi’s Cuthbert.
