A modest Fife firm is celebrating a sensational victory in its trademark battle against a huge corporate giant.
Garage chain D&G Autocare found itself at the centre of a row following an intervention by Italian fashion giant Dolce & Gabbana.
The Dunfermline-based company, which has nine branches around Fife, Perth, Stirling and Livingston, applied to register its name as a trademark in October to prevent other garages from copying its success.
The firm’s owners David Hunter and George Simpson whose initials make up their D&G expected their application to the UK Intellectual Property Office to be passed without any problems. But in December the Milan-based fashion brand Dolce & Gabbana lodged a ”notice of threatened opposition”.
Dolce & Gabbana’s trademark agents wrote to the Fife firm saying their application overlapped with their registered trademark and that it was likely that people could be confused between the two businesses one is known for its £735 handbags, the other for its £35 MoTs.
The letter added that the Fife firm could benefit from the confusion between the two companies and demanded the garage chain withdraw its application.
”It was a very strongly worded letter and I think it would have scared a lot of people off,” said George (42). ”But it left a very sour taste in our mouths and we decided to fight their objection.”
Dunfermline-based solicitor Neil Killick from Young & Partners wrote back to Dolce & Gabbana on behalf of the firm pointing out the differences between the two businesses and asking for proof of Dolce & Gabbana’s presence in the car industry.
Meanwhile the objection period for the trademark application was extended until March 1 by the UK Intellectual Property Office since there had been an objection.
Neil explained: ”The way trademarks work is that there are several trademark classes, which is why ‘Polo’ is a registered trademark for Volkswagen in relation to the car and Nestle in relation to the mint.
”Dolce and Gabbana had registered the D&G name across all the different trademark classes, including class 12 which covers vehicles and vehicle parts. We asked for proof of the use of their trademark in this class, which we knew would be impossible for them to do.”
The Italian firm came back with a deal saying it wouldn’t formally object so long as the Fife company always used the word ‘Autocare’ with its D&G logo and so long as they didn’t try to register the firm outside Britain.
However, the offer by fax wasn’t received until February 29, just a day before the objection period ended.
The Fife entrepreneurs decided to ”wait it out” for 24 hours to see if a formal objection was made by the Italian company. They learned on Monday, when the UK Intellectual Property Office updated its records, that Dolce & Gabbana had failed to make their formal objection in time.
D&G Autocare had been officially granted its trademark with no restriction.
George said: ”It’s been a very time-consuming and expensive battle but it has been absolutely worth it. I see the trademark as a milestone for the business which protects our identity, our business and our staff.
”At times it has felt like another D&G David and Goliath. When we started the business eight years ago we never would have imagined our name would have been the subject of a trademark battle with a huge multinational. It means we can now concentrate on growing our business further with our great team.”
He added that the company was looking to expand its operations into Edinburgh.
Their solicitor said he was relieved to see ”common sense” prevail.
Neil added: ”I’m delighted. It’s always difficult in a situation where you are up against a very well funded multinational so I’m thrilled for David and George.”
Dolce & Gabbana declined to comment.