An established client of the firm, InterSpirit S.p.A. (the "Client"), a multinational beverage and alcohol company headquartered in Milan, is concerned about a possible trade mark infringement. As one of the world's largest drinks companies, with over 200 brands in its portfolio and operations in over 180 countries, brand protection is extremely important to the continued success of their business.

In this instance, the Client's intellectual property enforcement team have become aware that a small Scottish distillery owned by a company called Hot Fuzz Whisky Ltd and located on the remote Hebrides archipelago have launched a new line in their whisky collection. The issue is that the logo on Hot Fuzz's new brand of whisky (both as used on bottle labels and in marketing) is similar to one of the Client's own established whisky brand's logos which is popular in the UK.

The Client's in-house intellectual property enforcement team are concerned that their registered trade mark is being infringed and have forwarded you images of both the potentially infringing logo and the Client's original logo. They have asked for advice as to whether there is a legal basis for a trade mark infringement claim in this case, our recommended course of action, and ultimately, the remedies generally available for trade mark infringement.

The Client has been heavy handed in the past with regards to potential trade mark infringements and has generally proceeded straight to issuing small companies with letters before claim (i.e., a formal notification that unless certain conditions are met, the Client would commence a claim in court). A brand can be one of a company's most valuable assets, giving recognition and consistency to products across the world, and enforcing trade marks helps retain the value of the brand ensuring it doesn't become diluted or damaged by competitors. However, it is also important that large companies strike the right balance in their approach to brand protection. They don't want a reputation as a bully who over-zealously shut down small local competitors with expensive court action!

Here is your task

You have been asked to form an email to your Client which sets out at a high-level: (i) a legal analysis of the merits of their assertion of a trade mark infringement; (ii) the firm's recommended course of action in this matter; and (iii) the remedies generally available for trade mark infringement, should the claim end up being resolved by court action.

In order to draft an effective email to your client, we would recommend using the steps below as a guide:

1. Carefully study the background information above and the Shepherd and Wedderburn Article "Red Bull v Bullards: balancing brand protection and reputation" provided in the resources section below.
2. Open the link to the Trade Marks Act 1994 and familiarise yourself with the relevant sections, including sections 10 and 14-19.
3. Study your Client's logo and the potentially infringing logo and carry out a compare and contrast analysis.
4. Once you have formulated your analysis, draft the email with the aid of the template provided in the resources section below.

Sources-

https://shepwedd.com/knowledge/red-bull-v-bullards-balancing-brand-protection-and-reputation

https://www.legislation.gov.uk/ukpga/1994/26/contents