What’s in a name? Patagonia v Pattie Gonia
If you are a keen climber or outdoor enthusiast, the likelihood is that you would have heard of a leading brand called Patagonia. In addition, you may have come across the company because of the philanthropic decision made by its billionaire owner, Yvon Chouinard to donate the entire shareholding to Earth (as in the planet). Mr Chouinard stated in 2022, that any profit made by the company would be used to fight climate change.
Given a decision like this to forgo considerable wealth and profit to benefit the entirety of mankind, it might be reasonable to consider that a company such as Patagonia would be less concerned with its Intellectual Property Rights (IPR).
However, as Stuart Southall of KANGS discusses in this article, Patagonia realises the value of its IPR and the need to enforce those rights.
A Different Approach to IPR Enforcement
What is somewhat unique about Patagonia, at least insofar as its stance on protecting its rights is concerned, is the manner it has adopted in defending them.
Some corporations will pursue an aggressive stance and send out threatening “cease and desist” letters, demanding various levels of quantum to individuals and SMEs that they consider are infringing their rights. Alongside these demands for substantive quantum, they demand costs and interest, albeit depending on the jurisdiction.
Patagonia on the other hand, has recognised that litigation may not be particularly good for its brand image and has therefore adopted a significantly more conciliatory approach to the enforcement of its rights when it sent its cease and desist letter, and subsequent statement of case to the infringing party in this instance.
Who is “Pattie Gonia”?
For those not in the know an American citizen called Wyn Wiley, a prominent LGBTQ+ supporter and climate activist, is on social media and more commonly known as “Pattie Gonia.”
Trade Mark Similarity
Phonetically, aurally, and visually, there is little difference between the Marks. In the UK at least, any attempt to register this Mark (“Pattie Gonia”) would likely (i) be met with an Opposition, (ii) be determined to be registered (or seeking registration) in bad faith and (iii) most likely be refused, particularly in circumstances where “Pattie Gonia” was seeking registration under a similar or identical class.
Unfortunately, Mr Wiley ignored all pre-action correspondence and sought to register a Mark (with the USPTO) across five classes, one of which included clothing. Patagonia took the view that it could not allow this Mark application to proceed unopposed.
Whilst US Trade Mark law (which is federalised so applicable to all states including DC) is different to England & Wales, it is understood that US law permits, to a reasonable extent, parody, insofar as it does not extend to an attempt to “promote” your own brand in order to sell your own products.
Mr Wiley / Pattie Gonia’s issue in this dispute is that he is attempting to sell clothing under his “Pattie Gonia” brand and, given the commonality of the Mark i.e. the phonetic, aural, and conceptual similarity, it may be difficult to make a case that it is anything other than a deliberate attempt to commercially benefit from someone else’s brand reputation.
Brand Enforcement
It is not uncommon for big corporations to use robust means to defend their brand. Brew Dog famously wrote to a Birmingham pub called The Lone Wolf, asserting that “Lone Wolf” was a breach of its (Brew Dogs) vodka brand and, on realising the public outcry, sought to blame its lawyers for being overzealous.
Easy Group is a known enforcer of its rights and its belief in its entitlement to any derivative of “easy”, but it seems that IP protection and enforcement is not just about the protection of rights, but the way those rights are protected.
Public Relations (PR) appears to be just as important for these companies, as Brew Dog showed. Aldi’s PR is constantly at work (and is widely regarded as one of the best) particularly where there are allegations of trade mark infringement, trade dress infringement or even blatant copying.
One of the reasons that this case is interesting from an owner’s perspective (i.e. Patagonia) is how it has framed its case and the quantum it is seeking. Patagonia has confirmed that, in the main, it does not object to “Pattie Gonia” in terms of (i) stage presence, (ii) performance, and (iii) activism. It does however oppose any sales of merchandise. What is unique about this claim is that Patagonia are only seeking $1.00 in damages.
Whether this matter was played out before the Intellectual Property Office (whether in the UK or the US) or the Court (IPEC or otherwise), on the relevant threshold of “on the balance of probabilities” (which is assumed the US courts would use a similar threshold), Pattie Gonia may have some difficulties.
Likely Outcome in England and Wales
Bad faith would almost certainly be found (certainly in the UK but in circumstances where the US has a similar provision). Confusion would almost certainly be found. Were this dispute being tried in England and Wales it is a prime example of a s5(1) Trade Mark Act opposition/refusal as well as a finding of bad faith.
Probably Pattie Gonia would be better served in withdrawing its trade mark application, donating a considerably larger sum than the $1.00 sought to charity, and apologising, rather than attempting to proceed with securing a registration.
How We Can Help You
Owning a registered trade mark, particularly one that is widely recognised, can provide significant commercial value. At KANGS, our legal services cover all aspects of trade mark law, with particular experience in resolving intellectual property disputes.
Whether your trade mark has been infringed or you are facing allegations of infringement, our trade mark lawyers provide strategic legal representation tailored to your circumstances. We are committed to protecting your rights, intellectual property and brand.
Contact us using the details below and a member of our team will be delighted to assist you.
Tel: 0333 370 4333
Email: info@kangssolicitors.co.uk
We provide initial no obligation discussion at our three offices in London, Birmingham, and Manchester. Alternatively, discussions can be held through video conferencing or telephone.
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