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Grocer grumble as Trader Joe’s prepares to protect brand

Written by Ellis Sweetenham on 30 May 2017

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A brand is a business’s identity.

This identity is arguably the business’s most expensive asset and it is this that draws in new business and ensure existing customers keep coming back.

Therefore, it is essential for a business who have been trading for a number of years in a bid to build a well-respected brand to be able to protect this and take action against those who are looking to take advantage of it.

This is exactly what Trader Joes is doing.

Trader Joes is a grocery business trading in the US with 464 stores across 41 states therefore making it one of the best known brands in the grocery market in the States. They focus on mainly their own products, both food and non-food based, promoting themselves as ‘the neighbourhood grocery store’. Many families in the US see Trader Joe’s as the ideal convenience store which everything they may need at short notice.

Trader Joes have built their reputation on this convenience gap in the market and have become a worldwide recognisable brand, even though they only trade in the US. They have also protected this brand with a registered trade mark.

It is this trade mark they are using as the force in a battle of the grocery stores, the opponent being just across the border.

TJ are arguing that Canadian based grocery store, named Pirate Joe’s is infringing their trade mark and trying to capitalise of their reputation.

It seems Trader Joes were on to something as Pirate Joes isn’t exactly a legitimate business. They source the stock through Trader Joes, by purchasing the goods in the US, smuggling them across to Canada and selling them at a profit.

It may seem that this case is a clear-cut infringement but a lot of back and forth has led to today’s position.

Almost immediately after Pirate Joe’s was set up, by its founder Mike Hallatt, TJ set them a cease and desist letter in 2012, which was ignored.

This led to the first trade mark bid, which was dismissed as it was determined that Trader Joes could not take action against Pirate Joes as they did not trade in Canada.

However, this 2013 decision was overturned, therefore putting a sharp end to Hallatt’s celebrations.

Last year, the Ninth Circuit Court of Appeal stated the previous decision to prevent TJ pursuing a claim in Canada was wrong and therefore set the case for a trial hearing in November this year.

This was a positive step for Trader’s who finally were able to set out their case against Hallatt, who seems to have a hard task ahead.

Not only must he show that there has not been an infringement of Trader Joes trade mark which is going to be a difficult legal battle, but just to have the opportunity to fight against the claim is going to be a financial burden for Pirate Joes.

As it stands, Hallatt is in no financial position to defend the claim, therefore he has taken to the online platform, Crowd Justice seeking to raise $250,000 to cover the legal fees of a trade mark attorney.

Without this, Trader Joes pretty much have the case in the bag.

At present, Pirate Joes have only raised $105, which does not bode well for their success but this is definitely one to watch as it can set a platform allowing a business to sue a business in another country in which they do not trade.

Lawdit Solicitors will bring you important IP news as it comes in.

If you'd like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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