A Scottish knitwear firm has won a legal battle with Asda over its brand name after the supermarket chain said it was too similar to its George clothing range.
The retail giant objected after McGeorge, which has retailed cashmere since 1881, applied to register ‘McGeorge of Dumfries’ as a trademark.
Despite McGeorge being worn by Hollywood icons including Steve McQueen and Grace Kelly, Asda argued the company could be ‘free-riding’ on its reputation and threaten its sales in Europe.
The European Union Intellectual Property Office (EUIPO) ruled in Asda’s favour last year and said McGeorge could not register the trademark for clothing.
But the Scottish firm has now had the decision overturned on appeal.
Despite McGeorge being worn by Hollywood icons including Grace Kelly (pictured above), Asda argued the company could be ‘free-riding’ on its reputation
The company’s efforts to protect its brand have apparently been frustrated by its dispute with the supermarket chain.
In a witness statement to the EUIPO, McGeorge’s owner Lorenzo Borre, 51, denied there would be any confusion.
He claimed his firm’s sweaters sold for more than £100 in high-end fashion stores whereas George products were only sold at Asda for much lower prices.
Mr Borre said: ‘Aside from the obvious differences between the opponent’s marks and the application, it should be abundantly clear that the consumers of my company’s products are not going to mistake one for the other.
‘Nor will they be confused into believing there was any connection between the businesses, not least because of who the customer is, the price tag and the route to market.
‘The application is a trademark which is synonymous with the McGeorge brand, which has its roots and history in Dumfries. The brand is still sought after and recognised today, with historic products retaining a higher value than the opponent’s.’
McGeorge disappeared in the early 1990s but has been revived in recent years and now operates from a mill in Hawick.
Meanwhile, the George brand has been sold at Asda stores since 1990 and has expanded into home furnishing, kitchen and garden ranges.
Actor Steve McQueen pictured left, wearing a McGeorge jumper, and director Norman Jewison discuss a scene from the movie The Thomas Crown Affair
Lawyers for Asda accused McGeorge of using a similar brand name to benefit from their reputation.
They said: ‘The applicant, a UK company, cannot fail to be aware of the opponent’s George brand.
‘It is clear that the mark McGeorge of Dumfries is extremely similar to George which is very well known, by virtue of extensive long-standing, wide-scale use.
‘It is clear that the applicant benefits from the attractiveness of the George brand, by misappropriating its reputation and goodwill.
‘Use of the mark McGeorge of Dumfries is potentially “free-riding'” on the goodwill of the opponent’s earlier marks.’
The European Union Intellectual Property Office (EUIPO) ruled in Asda’s favour last year and said McGeorge could not register the trademark for clothing. But the Scottish firm has now had the decision overturned on appeal (file photo of a George warehouse logo sign)
In a written decision, the EUIPO’s appeal board said the George brand did not enjoy ‘enhanced distinctiveness’ in the European Union and ruled there would be no confusion between the two brands.
They said: ‘The fact that the marks coincide in the verbally identical component ‘GEORGE’, is not sufficient to render a likelihood of confusion between the signs.
‘Moreover, as correctly argued by the applicant, it is common for names incorporating similar elements to co-exist within the fashion industry, because consumers are used to differentiating between those that have even minimal differences.
‘Overall, the signs display certain visual and average phonetic similarities, but these are attenuated by the easily recognisable differentiating component of the mark applied for, ‘Mc’ and the conceptual impact that that component has.
‘It is, therefore, unlikely that the marks in conflict will be confused, even though the goods are identical.’