James Martin, known for his eponymous ITV morning show, suffered a blow from the UK Intellectual Property Office (UKIPO) after he applied for trade marks for his own name and ‘James Martin’s’ for both alcoholic and non-alcoholic drinks, which were then opposed by whisky titan MacDonald & Muir Limited. The company is best known for its premium whisky ranges, like Glenmorangie and Glen Moray, and seemingly a whisky named James Martin’s.
Counsel for MacDonald & Muir averred that the company has owned trade marks for ‘James Martin’ and ‘James Martin’s’ for alcoholic drinks since 1998 and has been trading under that name for over a century. Unfortunately for Martin, the UKIPO ruled in favour of the liquor giants, stating that there would be a ‘likelihood of direct confusion’ between the registered trade marks and Martin’s application, and was followed by an order for costs of £1,900 to be paid to MacDonald & Muir.
Whilst this decision would have certainly put a spanner in James Martin’s commercial plans, the morning TV star has been granted permission to appeal so it remains to be seen if he will be turn the tide in his battle against Macdonald & Muir. Martin presumably will (if he did not already) seek to rely on the own name defence to the opposition and/or infringement proceedings. However, to be successful he will need to prove that his use is in accordance with honest business practices and does not unduly seek to ride on the coattails of MacDonald & Muir’s existing goodwill and reputation, which may be a difficult hurdle for him to overcome.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
