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Ian Johnston, msnbc.com
Nick Letchford, co-founder of Jaguar Shoes, outside the bar in Kingsland Road, east London.
SHOREDITCH, London – A British arts "collective" visited by stars like Natalie Portman, Amy Winehouse and Beyonce is locked in a legal battle over its name with automaker Jaguar.
Jaguar Shoes -- a cafe, bar and art gallery -- opened in London’s Shoreditch in 2001 at the start of the transformation of the area from a run-down district to a hub of artistic activity that's become a favorite haunt of the city’s “hipsters.”
Founders Nick and Teresa Letchford, who are brother and sister, created the venue by knocking together a former bag store and a former shoe store. Partly due to a lack of money, they decided to keep the storefront signs, and the quirkily titled “Dream Bags Jaguar Shoes” was born.
Because the Jaguar Shoes sign was over the main door, that became the name they were known by, the name of the collective of artists who show their work there and the name of their website.
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But when they sought to protect “Jaguar Shoes” with a trademark –- a move Nick Letchford said was a response to their work being copied -- car company Jaguar Land Rover submitted an objection that might ultimately make it impossible or impractical to use the name.
The gallery has promoted more than 600 artists, musicians and fashion designers and has been featured in ads for the likes of sneaker firm Adidas.
It was name-checked in the song “You Want History” by British band Kaiser Chiefs. Actress Natalie Portman once danced to the music of Animal Collective in the basement, and Beyonce borrowed their office to do a webcast.
“In Shoreditch, that sort of thing doesn’t come as a massive surprise,” Letchford told msnbc.com in an interview at Jaguar Shoes, because it is “completely full of creative-industry types.”
A former assistant film director who worked with Madonna's ex-husband and filmmaker Guy Ritchie, among others, Letchford said when they adopted the shoe store’s name, “it never crossed our mind” that there might be a problem.
“This has been going on for about two years. We’ve tried to settle it, we’re looking to settle, but it feels like we’re banging our heads against a brick wall,” he said.
“Conceptually, Jaguar Shoes is a very different thing to a Jaguar [car]. If I think what jaguar shoes are, what they represent … most people are going to see a pair of catskin shoes,” he added. “I think it’s basically a default objection to any other use of jaguar, the word.”
Asked if losing the case would mean they would not be able to use the name, Letchford said, “I don’t really want to contemplate that.”
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A hearing at the U.K.’s Intellectual Property Office is due to be heard in the coming weeks.
Catherine Wolfe, president of The Institute of Trade Mark Attorneys, told msnbc.com that the “basic test” was whether people were “confused” and thought Jaguar Shoes had something to do with the car company.
“Are you more likely to go to that bar because it’s got the name of a cool car?” she wondered.
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U.K. law also says a trademark will not be registered if it takes “unfair advantage” of or is “detrimental” to an earlier trademark.
In a recent, separate case, a bar in Southampton, England, called The Hobbit was threatened with legal action for copyright infringement by California-based Saul Zaentz Co., which owns worldwide rights to a number of brands associated with author J.R.R. Tolkien.
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After public outcry, a deal was reached that saw Gandalf actor Sir Ian McKellen help pay a copyright license fee to enable the bar to carry on using the name.
Letchford clearly hopes publicity will persuade Jaguar Land Rover to drop its "irrational and inappropriate pressure," as he said in a press release on Jaguar Shoes' website.
A petition has been set up asking people to sign if they have “never experienced any confusion between the restaurant bar and gallery brand JAGUAR SHOES and JAGUAR who make cars,” and wish to ask the trademark authority to allow Jaguar Shoes to trademark its name.
As of Tuesday morning, the petition had 859 signatures. News of the legal fight has also been spreading on Twitter. Letchford said he thought it likely that most people in London’s creative industries had heard about their case.
Letchford said Jaguar’s attempt to protect its brand seemed to have achieved “completely the opposite.”
“People have just been like ‘Is this for real?’ It doesn’t feel like it’s for real,” Letchford said.
“I’ve been stressed out about it for two years, and now it’s about to come to a head. It’s a point of principle. really.… The sign is what started the business. That’s the genesis of Jaguar Shoes, that’s the authenticity.”
Jaguar Land Rover, owned by Indian car giant Tata Motors, did not return a call from msnbc.com asking for comment.
While public records show that Jaguar Land Rover has objected, they do not reveal the grounds for the objection. Letchford said there had been negotiations with Jaguar Land Rover but added that he had been advised not to go into detail.
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The British legal system at its finest! In the US, a trademark or service mark protects only those products specifically associated with it. Thus, you have Wagner Power Painters, and Wagner Juice, and nobody gets the two confused. Unless Jaguar Motors is in the footwear business, they have no tight to complain! Again, in the US, their stance would be considered "intentional interference with economic relations", and it would likely be they who would be facing legal action!
As a Trademark Attorney, I would have to disagree.
See my posting below. I have had clients fall victim to this, as companies try to "police their mark" by filing Opposition proceedings against what they feel are confusingly similar marks - even for different products.
The "Field of use" limitation is not always a panacea.
And I suspect that Wagner Juice may have had prior rights to the mark, or the people at Wagner power painters just didn't think their mark was as worth protecting as, say, a car company.
But sometimes you can fight this, and win - at least a settlement.
My favorite company in this regard is Cristallino, which makes a nice $6.99 Spanish Cava. Cristal, the makers of $699 overpriced pimp juice Champagne which rappers like to drink, sued them.
Cristallino stuck to their guns. But they did change the label with a prominent disclaimer, "Not affiliated or associated with Louis Roederer's Cristal Champagne"
Oddly enough, that caught my eye. I had to buy a bottle. You know, it is the best Cava out there, at a price cheaper than most beers. I buy it by the case now.
Sometimes you can flip these things into a great marketing campaign.
And even if you lose, it is an opportunity to "re-brand" your company and gain publicity that way.
"Jaguar Shoes is now......" and have an opening party. Why not? Cheaper than hiring lawyers.
First of all, this is not an attempt by Jaguar Land Rover to block them from using the mark "Jaguar Shoes" but merely to prevent them from REGISTERING the mark in the UK. There is a big difference.
Why is Jaguar doing this? Because they are a bunch of pratts who have money to waste?
No, they are doing what is called "Policing the mark" - showing that they are defending their mark, even if they lose this Opposition proceeding before the UK Trademark Office.
Why do they do this? Because if they don't, the strength of their mark is diminished.
If they failed to object, then a number of people could use Jaguar-related marks, to the point where the mark "Jaguar" loses its meaning.
I am not saying I agree with this strategy - this "Policing of the Mark" strategy often ends up generating bad press for the Mark holder, and unfairly victimizing small companies that cannot afford to pay for an expensive opposition proceeding.
HOWEVER, if "Jaguar Shoes" were my client, I would advise them, as CLEVER AND CREATIVE PEOPLE to come up with a new and unique name. After all, the original name was one cobbled together from an existing handbag and show store.
The best and most powerful marks are the unique ones - they are the easiest to register and easiest to enforce. XEROX and KODAK are powerful marks, because they are basically nonsense words that we now identify with the products involved. Picking marks that are confusingly similar to others will only result in greater difficulty in obtaining a registration, and escalate costs.
It is a shame that creative people are so, well, uncreative, when it comes to their own Mark.
You can blame Jaguar all you want. But if you tried to register TOYOTA SHOES, CHEVY SHOES, FORD SHOES, RENAULT SHOES, MERCEDES SHOES, or BMW SHOES, you would probably face a similar Opposition proceeding at the Trademark Office level - if not an actual infringement case in court.
Pick new, original, distinct, and unique marks, and save yourself a lot of trouble.
Pick marks that are similar to others, and you will struggle.
Kodak is a mans last name. Why are you allowed to use your name "Bell" for anything you do? Don't you think that the corporation Bell would go after you if you started your own electonics store? Or what about a company that made cell phones that really sucked?
Seems a bit far-fetched to me. If someone wanted to build a "McDonald's" car, would the worldwide burger icon object in court? I doubt it.
McDonald's has gotten a lot of bad press for suing people in the UK and Ireland who run restaurants or pubs, and their name happens to be, well, McDonald.
McDonald's is a very powerful mark, having acquired a lot of "secondary meaning" in the marketplace. I suspect they would go after anyone, for anything, to police that mark.
Similarly, if you try to open a tropical bar, using the name of a Jimmy Buffet song, expect a nice letter from the folks at Greenberg Traurig. He may come across as a laid-back beach bum, sipping Margaritas and strumming his guitar, but he actually sits at the top of a huge media empire. Do not mess with Jimmy Buffet!
Apple still pays the old MacIntosh Amplifier company (remember those old tube jobs from the 1960's? You are one of the few!) a royalty to use the MacIntosh mark for its computers.
If you asked me, as an "ordinary consumer" I would not assume the Mac computer was made by a company that basically hand-assembles audiophile tube amplifiers.
But that's just me, I guess.
The deal is, why would you WANT to name a car "McDonald's"? Isn't that showing a distinct lack of creativity?
I mean, coming up with a name isn't hard to do. I don't have much respect for laziness. Creative people can do better.
Pick a unique and unusual name - it will cost you a lot less in the long run. Why do you think sites like Google, Monster, Amazon, eBay, GoDaddy, etc. all have funny names? Those are powerful marks, as a result.
Be creative - its cheaper.
They'd be better off with a new name. Jaguars are automobiles known basically among purists for the amount of time they spend in the garage getting worked on, which is why the bulk of their owners were wealthy (at least before they bought one).
Big corporations are VERY bad when it comes to going after the little guy if the even think they are benefitting from their logo or name. It goes so far that railroad giant Union Pacific went after train model manufacturers and wanted a license fee. The fee they wanted was more than some of the mom and pop manufacturers made in a year. They also wanted it for any railroad that UP owned. That fee has been negioated to a more reasonable fee, but they still get their fee. Now in this case, Jag might have a chance if this was an automobile oriented store, but it is an animal oriented store. No conflict seen by me in this case.
This is simple quit buying jags and quit using their products denounce their item at every opportunity they want to be the only jaguars int eh world then we will need to kill off the cats as well or rename them.
That is the corporate way. Break the cycle of abuse today boycot these idiots and others like them out to take over the world.