The Battle for the Buy Button: Brand Owners' Curtain Call Against Online IP Infringement

May 2015

Abstract

There have been significant changes to brand protection considerations since Bass registered the UK’s first trade mark in 1876. Companies that once survived on a loyal local customer base now have access to a global audience; their brand acting as a passport to markets which preceding generations could only dream of. The internet has provided limitless possibilities for those businesses technologically astute enough to grasp the opportunities provided by the digital age. There is no doubt that an online presence is important for brand owners, and that online retail is booming. E-commerce is the fastest growing retail market in Europe and the Office for National Statistics has reported that online sales have increased by 12% in the 12 month period since January 2014. Customer desires to shop online have also meant that online marketplaces have thrived. Where bricks and mortar stores have struggled, online platforms such as Amazon have stepped in and revolutionised the retail environment. The nails for the coffin of High Street retail were probably purchased online.

Authors

Aidan Parsons

Legal Counsel, Bonnington Plastics Limited, UK

Aidan Parsons is the legal counsel and company secretary of Bonnington Plastics. He was brought into the company in January 2014 to set up the legal department and has overseen the company’s campaign to tackle online intellectual property infringement. The innovative approach taken to the protection of Bonningtons’ IP rights earned the company the In-House Innovation Award at the British Legal Awards 2014. Prior to taking the role at Bonnington, Aidan worked in the in-house legal teams of a global chemical distribution company and a prestigious media and entertainment brand. Sarah Bazaraa is a solicitor at Pannone Corporate LLP and specialises in IP and media disputes. Sarah has worked with Bonnington Plastics since February 2014 in respect of copyright infringement, trade mark infringement and passing off disputes, and in particular has worked with Bonnington Plastics in respect of the issue of High Court and Intellectual Property Enterprise Court proceedings against online infringers of the Kingfisher brand.

Sarah Bazaraa

Associate Solicitor, Pannone Corporate, UK

I am an Associate Solicitor in the Intellectual Property and Reputation Management team at Pannone Corporate LLP. I advise clients in respect of claims of intellectual property infringement, including in the High Court and specialist Intellectual Property Enterprise Court. I regularly advise on issues concerning copyright infringement, UK and Community registered and unregistered design right infringement, trade mark infringement and passing off. I also advise clients in respect of domain name disputes, including through the pursuit of Nominet and WIPO complaints. I have experience of advising companies and private individuals subject to defamatory publications through traditional print, broadcast, and new technologies including via social media, as well as advising clients in respect of such threats at a pre-publication stage. I have advised clients in respect of breach of privacy and breach of confidence claims, including in respect of the high profile specialist voicemail interception litigation. In addition to specialist intellectual property and media work, I also advise clients in relation to commercial, contract, and franchise disputes.

Companies

Bonnington Plastics Limited

Bonnington Plastics, the company behind the Kingfisher brand, is one of the largest importers of value-for-money gardening, DIY and homeware products in Europe. The Nottingham-based company was founded by Paul and Marilyn Fisher in 1967 and the company is still wholly-owned by the Fisher family. Their son, Ian, is now the managing director. The company offers around 2500 products which are sourced by Bonnington’s Chinese subsidiary, Big Fish Ningbo. The opening of a China office in 2008 allows Bonnington to manage the complete supply chain and enables it to ensure that its customers are supplied with quality products in the required timeframe. The company supplies a broad range of customers from some of the largest retailers in the UK to small internet and independent retailers, as well as companies throughout Europe. Bonnington is dedicated to supporting the growth of all its customers and has invested heavily in order to tackle the growing problem of online intellectual property infringement which is affecting the sales of genuine Kingfisher sellers. Having secured significant financial settlements from companies and individuals selling their own branded goods under Kingfisher listings online, Bonnington is now keen to share its knowledge with internet retailers and their representatives so as to stamp out the practice of substitute selling and to ensure fairness in the competitive online marketplace.

Pannone Corporate

Pannone Corporate LLP is a Manchester based firm which provides services to a wide range of clients including businesses, the public sector, charities and individuals. We are focused on providing clear and pragmatic advice to a wide range of clients across the UK and globally, through our established network of associated law firms. Our people are recognised for the quality of their work and their ability to deliver the highest level of client service. Most of our partners are recognised as experts or leading individuals in Legal 500 or Chambers and Partners.

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