If customers are ''confused,' you may have a case for trademark violations

July 8, 2002

LONDON -- Imitation might be flattering, but not in business.

According to The Times, two decades ago, Robert Payton, owner of the Chicago Pizza Pie Factory in London, learned that customers were mistaking his restaurant for another London pizzeria, LS Grunts Chicago Pizza Company.

Concerned that LS Grunts' look and menu were too alike, Payton sued for trademark violations, but lost the case.

In the U.S., a similar trademark violation lawsuit was filed in 2000 by 2,700-store Papa John's against 35-store Pizza Magia. Both chains are headquartered in Louisville, Ky.

In the nearly two-year-old suit, which remains in the discovery phase, Papa John's alleges Pizza Magia copied aspects of its products, systems and standards.

"Imitation is an age-old problem for businesses, but fighting it has not got any easier," said Sarah Lambeth, of Haseltine Lake Trademarks, a law firm in London. "It is expensive and very hard to get evidence."

The evidence Lambeth points to is proof that: 1. the imitator is misrepresenting his company as the original; 2. that the imitator's success is draining business from the original; and 3. that the imitator is damaging the original's reputation.

Alice Mastrovito, a trademark attorney with London's Mastrovito and Associates, said the average customer must have "experienced confusion" between the original business and the imitator's in order for the plaintiff to have a trademark infringement case.

"Just because the elements of another business look similar -- say its color scheme or packaging -- it does not mean it is doing anything wrong," Mastrovito said. "The key question is: would someone mistake that company for yours?"

Experts in trademark protection say businesses must work to protect themselves from imitation from day one by registering as trademarks everything one wants to protect in his business. In addition to the business' name, design features and even a restaurant menu can be registered in the U.K. Maintaining records and photographs of the business' development will further enforce a case.

"Keeping advertisements and pictures of your shop could be vital proof to show when you started up and the extent of your reputation," Mastrovito added.

And if another businesses appears to be imitating yours, Abbey Legal Protection's Murray Fairclough advises clients to act quickly.

"If you hang on for several months, a judge will find it much harder to believe that your reputation and trade is being damaged," said Fairclough.

Lambeth added that if such a case goes to court, the plaintiff must have ample proof of confusion, "whether in phone calls or speech. ... If someone asks you if your restaurant is the same as the one down the road, for example, you should keep their name and number for potential use as a witness."

But before accusing any party of imitation, Lambeth cautioned operators to consult a trademark attorney or solicitor. "Be sure of your ground, because if you lose your cool, you could face even higher costs."

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