Enforcing your trade mark rights is about managing risk. But what happens when the pursuit of maintaining your registered rights against third parties becomes a risk in itself?
The recent dispute between Airbnb and bnb-side, a six-room bed and breakfast on the Isle of Portland, provides a useful reminder that bigger is not always better when it comes to trade mark enforcement.
Airbnb has opposed bnb-side’s UK trade mark application[1], which seeks protection for a variety of temporary accommodation services in class 43. The mark in dispute is pictured below:
Prior to opposing the application, Airbnb sent legal correspondence challenging its use and registration of the name. At the heart of the dispute are three letters that, to most people, will be immediately recognisable: “bnb”.
According to bnb-side, the letters simply describe what it offers, namely bed and breakfast accommodation, combined with a nod to the area’s local arts festival, “b-side”. The business was established to help fund this local festival. Airbnb’s position is that the use of the term threatens their UK protection. The dispute is ongoing and there has not yet been any finding as to whether or not bnb-side infringes Airbnb’s rights. Reporting suggests both parties could be open to an amicable solution, so hopefully there is a way for them to put the matter to bed.
Whatever the eventual outcome, the story raises a broader question for brand owners. At what point does vigorous enforcement become over enforcement?
There is an obvious commercial rationale for businesses to monitor the market, and challenge use and applications that genuinely threaten their brands. Failure to act can create its own problems, particularly where a third party adopts an identical or similar mark in relation to identical or similar goods or services. Enforcement has a cost in time and money though and it can also carry a risk of something bigger if the action is perceived as disproportionate – a reputational cost.
The very thing the action is intending to protect, the reputation that has been built in the brand, can be undermined by the way the action is perceived by consumers. The reputational risk can be particularly significant where the other party is substantially smaller. A dispute that may appear relatively minor from the perspective of a global brand can become a major story when the other side is a six-room guesthouse supporting a local arts festival. In this case, it has been reported that bnb-side says its accommodation business generates almost half of the local festival’s annual turnover. It has also been reported that bnb-side has offered to modify its mark and use an ampersand or an ‘and’ in place of the ‘n’ but Airbnb have declined to agree to that. Whether that reporting is accurate or not, the story is now out there, and Airbnb may come across as being unreasonable.
There is therefore some room for thought here for brand owners and their advisers. The question should not simply be whether a legal argument can be made. It should also be whether making that argument advances the brand owner’s commercial interests.
A sensible enforcement strategy therefore needs to consider more than the strength of the legal position. Is there a genuine risk of confusion? Is the third party actually damaging the brand? Is the use likely to affect the client’s customers or market? What is the likely cost of pursuing the matter? And perhaps increasingly, how will the dispute look if it becomes public knowledge?
In the age of the internet and social media, the assumption that a dispute will remain between lawyers and their clients may no longer be realistic. A legal dispute that initially attracts little attention can quickly become a public relations issue, particularly where there is a potential David and Goliath narrative. That does not mean that brand owners should simply ignore potentially problematic use or applications. Nor does it mean that every high-profile enforcement action is necessarily disproportionate. Protecting the distinctiveness and reputation of a valuable brand remains an important part of trade mark strategy.
The Airbnb dispute is therefore a useful reminder that sometimes the most effective brand management strategy may be knowing when not to enforce. For brand owners, the question is not simply “can we take action?”. It is also “should we?”.
Before commencing legal action there is value in considering the bigger picture. If action is necessary, then it is important to set a strategy that also allows the public perception of the action to be managed in a light favourable to the brand owner.
[1] https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00004345327
