Barclays has finally aired its long-awaited ad campaign showcasing a new “inventive spirit” brand positioning. But if accountancy firm Cooper Parry had had its way, the Bartle Bogle Hegarty-created drive would never have seen the light of day. The East Midlands company last week asked the High Court to issue a temporary injunction preventing Barclays using the strapline “Now there’s a thought” on the grounds that it has used the same slogan for the past five years.
Cooper Parry’s request was rejected, but a trial will begin in December. The case is the latest example of David versus Goliath copyright and trademark suits, which Morgan Stanley head of consumer marketing Patrick Muir blames on the globalisation of brands. “It’s a marketer’s nightmare,” he says. “We all have a story about a near-miss, and as advertising gets more global, it is getting increasingly hard to find original properties.”
Earlier this month, Google was forced to change the name of its free e-mail service Gmail in the UK following a trademark dispute. The service will be renamed Google Mail after talks with Independent International Investment Research broke down. The London-based firm says it was using the Gmail name for an online application two years before Google.
Apple had more success in May when a US judge denied a request by computer retailer TigerDirect for a preliminary injunction. TigerDirect had argued that Apple’s use of the Tiger nickname alongside its Mac OSX operating system was causing “confusion, mistake and deception among the general purchasing public”.
Clarke Graham, partner at patent and trademark solicitors Marks & Clerk, says the problem often lies with both sides/ not enough companies trademark slogans, while others fail to thoroughly research whether a name or slogan is already being used before implementing campaigns.
Cooper Parry says it has spent more than &£1.5m in the past five years on advertising that uses the slogan and, if unsuccessful at trial, would be forced to drop it because its business would be linked with Barclays in people’s minds. A spokesman for Cooper Parry, which has offices in Nottingham, Derby and Leicester, says it was alerted to Barclays’ use of the slogan a fortnight ago, and has since submitted a trademark application.
As for the lawsuit, made on the grounds of “passing off”, the outcome will depend on the company’s ability to prove there has been misrepresentation and confusion in the relevant market, and that its business will suffer if Barclays’ usage is given the green light.
This is not the first time that work ordered by Barclays group marketing director Jim Hytner has courted controversy. Having joined the bank from ITV a year ago, Hytner scrapped the long-standing “Fluent in Finance” theme, which he believed alienated staff and customers.
A first attempt to inject “wit and warmth” into Barclays’ marketing backfired when an ad for its current account was banned by the Advertising Standards Authority (ASA). Barclays apologised for any offence the execution – featuring a man being stung by a wasp, developing an allergic reaction and being shot by police with a tranquilliser dart – may have caused.
Refusing to comment on the legal wrangle ahead, Barclays remains stoic. But Cooper Parry’s attempt at achieving an injunction, and the looming court date, has cast another shadow on the bank as it seeks to flaunt its “inventive spirit”.