Mayfair maneouvres and the Caring professions

Burly

When he hears the word "burly" in the context of night-clubs, the IPKat immediately thinks of bouncers standing guard to prevent the entrance of drunks, undesirables and (in the case of those who are both drunk and undesirable) people who have not yet achieved the status of minor celebrities or appeared on reality TV shows.  The word "burly" is a homophone of another word sometimes associated with clubbing, high living and jet-setting -- "Birley" -- a word that has been a little bit in the news of late. Let the IPKat's friend Fredericka Argent take up the story from here:

"The battleground

They are some of the most glamorous settings in which to spend an evening in London. Set in the heart of Mayfair, the names Le Caprice, The Ivy, Annabel’s and Harry’s Bar are just a few of the venues better known for their regular celebrity clientele than for the high quality of their legal disputes. However, behind the glitz and grandeur lies a battle over possession of a name; a class battle between ‘new’ money and ‘old’ money. The protagonists of this dispute are Richard Caring versus Robin Birley, and the ownership of the latter’s name.

Birley

Robin Birley (left) is the son of Lady Annabel Vane-Tempest-Stewart, daughter of the 8th Marquess of Londonderry and Mark Birley, son of the society portrait painter Sir Oswald Birley. From the 1960s onwards, Mark Birley created some of London’s most exclusive private clubs: Annabel’s, Mark’s Club, George and Harry’s Bar. These clubs were successfully run by Robin and his sister, India Jane. However, in 2006 Mark Birley disinherited Robin, following Robin’s squandering of some £200,000 of Annabel’s money to hire a private detective to spy on India Jane’s boyfriend. In 2007, Birley senior, in order to protect his clubs after his death, sold them to Richard Caring for nearly £100 million.

Caring

Richard Caring, son of a nurse and American GI, is a self-made multimillionaire who earned his fortune in the textiles industry working for Topshop boss, Sir Philip Green. Seven years ago, after Sir Philip Green lost a bid to buy UK clothing and food superstore, Marks & Spencer, Caring found himself out of a job. His next break came in the form of an opportunity offered to him by a friend to buy Wentworth Golf Club in Surrey (joining fee: a mere £15,000). This foray into the world of upmarket restaurants and clubs started the ball rolling for Caring, who has since bought – to name a few – Caprice Holdings in London, Soho House in Berlin, New York and Los Angeles and, inevitably, the four Mayfair clubs owned by the late Mark Birley. Since taking ownership of these top hospitality venues, Caring has seen his earnings go from strength to strength, as he continues to expand his empire both in the UK and overseas, including the Middle East and Asia.

The legal angle

The intellectual property part of this story starts in 2007, the year Mark Birley sold Mark Birley Holdings to Caring: Robin Birley had decided to return to his roots and open one members-only club in Mayfair. The club was to be located at 5 Hertford Street, fashioned on the old style of Annabel’s, and was to be named ‘Birley’s’. It was to offer a more traditional, “English” feel than Richard Caring’s clubs which, since his acquisition of them, had become known for providing expensive fun to wealthy business people and celebrities from around the world.

On 4 July 2007 Robin Birley attempted to register the names ‘Birley’ and ‘Robin Birley’ at the UK’s Intellectual Property Office (“IPO”) as trade marks for services falling under Class 41 (club entertainment services) and Class 43 (services for providing food and drink) under the Nice trade mark classification code. However, upon doing so, Birley found that Caring had already taken out a trade mark application for the registration of the name ‘Birley’ as well as ‘Birley’s’ just 24 hours earlier, also for services under Classes 41 and 43 (here). Subsequently, Caring sent Birley a letter informing him that, when he bought Mark Birley Holdings, he gained exclusive ownership of both the properties and the brand name for clubs.  Accordingly, Robin Birley was unable to place his name above the door of any new venue.

In March 2010 (see here, here and here), Caring launched legal proceedings to invalidate Robin Birley’s trade marks. The grounds for invalidity are not known, since the case never reached court. However, it seems likely that Caring would have relied on ‘relative grounds’ for infringement of a trade mark (s.10 of theTrade Marks Act 1994 (“TMA”) on the basis that:

(i) Birley’s registrations of the word marks ‘Birley’ and ‘Robin Birley’ were identical or similar to Caring’s earlier registered marks ‘Birley’ and ‘Birley’s’;

(ii) The competing marks were registered for identical services falling under Classes 41 and 43; and

(iii) As a result of the similarity and/or identical nature of the marks at issue and/or the services for which they were registered, there was a likelihood of confusion on the part of the public between the earlier mark and the later mark.

The legal action prompted Birley’s blue-blooded supporters, such as half-sister Jemima Khan, to rally round to his cause, including in a Facebook and Twitter campaign. However, Caring stood firm and eventually, after discussions over lunch at Wiltons of Jermyn Street, Birley agreed to put the legal wrangling to one side, leaving Caring was free to use the name ‘Birley’ without dispute. The records show (here and here) that in June 2010 there was a ‘full surrender’ of the trade marks ‘Birley’ and ‘Robin Birley’, indicating that the invalidity proceedings brought by Caring were settled out of court.

However, a few weeks ago, the battle lines appeared to be re-drawn, after Birley refused Caring’s offer of investment in 5 Hertford Street in exchange for Birley receiving a share in Annabel’s. Caring went back to the IPO and sought exclusive use of the name ‘Birley’ on a far wider array of goods and services than those for which they had previously been registered. Now, the name ‘Birley’ or ‘Birley’s’ could be registered, among many others, for: Class 16, paint brushes and plastic materials for packaging; Class 18, leather goods and umbrellas; Class 25, clothing; and Class 35, anti-perspirants and pharmaceutical goods. Case details for trade mark number 2577334 reveal that Caring sought registration for over a hundred different and wide-ranging goods and services which, if approved, could even force Birley to defend the use of his name on the chain of upmarket sandwich shops he owns as Birleys Limited, called ‘Birley’s Sandwiches’, registered since 1991.

In a feature in the Sunday Times Magazine (pages 53-57) on 12 June 2011 by John Arlidge, Birley revealed that he instructed his lawyers to oppose the application with full vigour: "...I’m effing disappointed and incredibly affronted. I’ve operated under the name Birley in shops for decades. My name is my name. It means a lot to me and I want it.”

So, what’s next?

At the moment, it looks as though Birley will be naming the club, due to open later this year, after its address, 5 Hertford Street, or after his late brother, Rupert.

It is unclear whether Caring has applied for an expansion of the range of goods and services for which he wants to register the name ‘Birley’ out of spite or because he genuinely wants to extend the reach of the brand. Caring will have to show the IPO a bona fide intention to use the mark for each class of the goods and services for which he applied to register (section 3(6) TMA), since the Trade Marks Register is not intended to be used for vexatious applications to obstruct a rival’s business. It seems likely that, unless he is intending to start manufacturing certain products and services under the ‘Birley’ brand name, Caring will have difficulty justifying his decision to apply to register the name for such a vast range of goods and services.

In conclusion, without any firm legal proceedings underway, it is not clear which direction this dispute will take. With plenty of money behind them, Caring and Birley can undoubtedly afford to draw out these Mayfair maneouvres a little longer, especially as Caring does not actually own a club called ‘Birley’s’ or ‘Robin Birley’, for which he would need immediate protection. However, there is also evidence that this battle is likely to blow over outside of the courts: in a recent comment to the Daily Mail, Caring said: “We’re not planning to produce Birley tapioca. It’s just the trade mark categories are very complicated. I’m on very good terms with Robin. I let him have the Birley name back for his cigars.”

Consequently, at the moment it looks like this is more of a war of words than a serious legal battle, so the only advice I can give readers is to lean back, sip a cocktail and watch this very English conflict play out ..."