Legal action under way over ‘Old John’ trademark claim
FORMAL legal action is under way to stop the Bradgate Park Trust demanding money from businesses for the use of its name or Old John imagery.
This spring, Bradgate Park Trust began approaching businesses and artists telling them they had to pay for the privilege to use the Bradgate name and Old John imagery.
Andy Foster, who runs Bradgate Landscaping in Cropston, was asked to either pay £250 a year to become a corporate partner of the park or stop using its imagery. He said he would rather change his business name and logo.
Then, part-time Narborough artist Sarah King was told to pay £100 – after asking park management if they would like to sell her greetings cards in its tea room.
The trust said it wasn’t interested in the cards – instead, it wanted £100 from her to continue using the landmark in her work.
Spearing Waite law firm in Leicester is representing the pair, arguing the trust doesn’t have the right to restrict people in this way.
It has now formally applied to the UK Intellectual Property Office to knock out the Old John trademarks. The trust has until July 2 to respond.
Ms King said: “They were threatening to send me to court for the £100 which sounded a bit crazy, considering how much it would cost them. If they knock out the trademarks we won’t be liable for anything. I just want some clarity so artists can know if they are free to paint landmarks.”
John Buckby, a trademark attorney at the Pocklingtons Walk law firm, said businesses should be free to use images of famous Leicestershire buildings to promote their links to the county.
He said: “Images of famous buildings are not generally protectable as trademarks, because they are too well-known to be distinctive of just one business.
“The trust seems to think it can prevent the use of any image of Old John, but that is not correct. It does not own any underlying rights in the image of Old John itself. Its trademarks are restricted to certain specific graphical representations, and certain goods and services only. We have advised Mr Foster and Mrs King the trust has no right to demand a licence fee from them.
“One reason for this is their representations are entirely different from those in the trust’s marks. Another is the marks do not cover the services provided by Mr Fos- ter, and Mrs King is not even using the images as trademarks.
“In addition, the trust’s trademarks appear to be vulnerable to challenge, because they do not seem to have been put to commercial use by the trust for many years.
“Mr Foster has decided enough is enough and recently instructed us to apply to revoke the trust’s trademarks. The trust will need to demonstrate genuine commercial use of its trademarks.
“If Mr Foster’s applications are successful, the trademarks will be revoked, and the trust will lose the basis on which it has been demanding licence fees from local businesses.”
Bradgate Park director Peter Tyldesley said it was difficult to comment while lawyers were involved. He said: “Our contention is Spearing Waite are misguided in this and we will continue to protect our rights.”
He previously told our sister paper the Leicester Mercury the trustees had a duty under the Charities Act to safeguard their assets.
He said: “Why should people have the right to use our intellectual property free of charge? We do not let them walk off with our physical assets.”