When is a portable cabin not a Portakabin??

This week my Dad received this cease and desist in his capacity as a volunteer with a local bowls club (a community organisation whose members’ combined age is older than the Gutenberg Press).

The club’s website referred to a temporary building used by the team, calling it a Portakabin, the legal team at Portakabin Limited apparently have alerts set up for just such an occasion and got in touch to ask for its removal.

There are lots of examples of big companies sending similar requests to small businesses or community organisations, so why the heavy-handed approach?

A UK registered trademark is a signifier (such as a word, phrase, logo etc) acknowledged by the UK Intellectual Property Office as distinctive for commercial purposes.?A registration lasts ten years and can be renewed for the lifetime of the product, effectively indefinitely.

For instance, Bass Pale Ale was the first trade mark filed with the UK IPO back in 1876 and is still in force today.

A registered trademark can be a valuable asset, allowing a business to leverage brand power so owners naturally want to retain their registered marks.

However, brand recognition is a double-edged sword. Consumers can become so familiar with a product that they use the trade mark as the generic term – dubbed ‘Genericide’.

If a competitor or other third party can argue that a business is not taking steps to maintain their trademark or that the mark is no longer distinctive they can challenge the registration and have it invalidated.

In the case of Portakabin Limited, if a rival maker of modular buildings wanted to challenge their trademark registration the company would have to demonstrate that they were actively using the trademark and defending it – to do so they might point to, among other things, an email they sent to a rural bowls club.

If a third party was successful in arguing that Portakabin was being used as a generic term and offered no meaningful differentiation in the market the business would lose a valuable asset so on balance they presumably view coming across as petty as a trade-off they are willing to make to protect their trademark in the long run.