Deliveroo Want Illegal Cannabis Business to Hop Off Its Brand Use
Dispenseroo has reportedly been making up to £50,000 a week since it first started trading in August of this year, with its products including bags of cannabis, edibles and vapes – a slight contrast from the burgers, pizzas and chicken wings which Deliveroo has to offer, and a fraction of the revenues of over £1bn which the latter made in the first 6 months of 2022.
Despite the significant differences in the goods offered by each of the businesses, Dispenseroo’s branding and guerrilla marketing has caught the attention of Deliveroo’s legal team.
The Dispute
In 2022, Dispenseroo put up 2,500 adverts mimicking Deliveroo’s name and logo on London Underground trains, and persuaded Instagram influencers to promote the brand. Transport for London later confirmed the posters were unauthorised and said it was removing any found on the network.
The UK-based cannabis dealer’s profile was further raised in October, when its website was publicised on digital billboards in a shopping mall in London.
With the increased marketing activity, it was only a matter of time before Deliveroo caught wind of the potential infringement. Dispenseroo were told at the start of this month that it may have to hand over its domain name to Deliveroo.
A Deliveroo spokesperson said that the food delivery company had filed a complaint to request the transfer of the ‘Dispenseroo’ domain names to Deliveroo, as reported by Vice World News. They had also requested that the cannabis delivery business ceases use of their ’Dispenseroo’ branding in order to protect Deliveroo’s trade marks and branding.
The spokesperson added, “Given the obvious and substantive mimicking of our brand, we have lodged a complaint with Dispenseroo’s website registrar and the World Intellectual Property Organisation (“WIPO”).” It is likely that the complaint issued to WIPO was made under their Uniform Domain Name Dispute Resolution Policy and was done so on the basis that the domain name registered by Dispenseroo is identical or confusingly similar to a trade mark in which Deliveroo has rights.
Our comment
According to section 10 of the Trade Mark Acts 1994, in the UK trade mark infringement occurs where a registered trade mark is used in the course of trade without the owner’s consent in any of the following circumstances:
1. The sign used by the infringer is identical with the registered trade mark, and is used in relation to goods or services which are identical with those for which the trade mark is registered;
2. The sign used by the infringer is:
a. identical with the registered trade mark, and used in relation to goods or services which are similar to those for which the trade mark is registered; or
b. similar to the registered trade mark, and used in relation to goods or services which are identical with or similar to those for which the trade mark is registered;
and, in each case, there exists a likelihood of confusion on the part of the public,
which includes a likelihood of association; and/or
3. The sign used by the infringer is identical with or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Of the possible grounds for infringement outlined above, the most likely which Deliveroo would choose to argue is the third one.
Based on the comments of their spokesperson, it is clear that Deliveroo are of the view that Dispenseroo’s name and branding is similar to their registered trade mark, which has a reputation in the UK, and that Dispenseroo’s name and branding is detrimental to the repute of Deliveroo.
Deliveroo will certainly be keen to put an end to Dispenseroo’s use of similar branding as soon as possible – the longer it continues, the higher the risk of damage to the former’s reputation. Deliveroo will not look favourably upon being associated with a business which specialises in the selling of drugs and drug-related products.
With the ever-growing line of case law in the UK, it could also be argued that ‘Dispenseroo’ could be perceived as a brand extension of ‘Deliveroo’ by an average consumer and/or that Dispenseroo’s actions amount to passing off.
Only time will tell just how far this legal battle will go. Dispenseroo appear unfazed so far, with their founder commenting: “We strongly feel that Deliveroo’s hostile claims to this name, which they derive off the word ‘kangaroo,’ is laughable.” This rather relaxed view gives an insight into the counter-argument which Dispenseroo may seek to rely on, and that is that Deliveroo’s trade mark is generic and lacks distinctive character.
Given the nature of Dispenseroo’s response so far, it wouldn’t be unthinkable for them to also argue that the increased appetite which comes with some of its products could even be of benefit to Deliveroo’s sales. However, it is unlikely these arguments would gain traction in court proceedings and Dispenseroo’s comments may indicate enjoyment of the free publicity associated with the dispute, rather than genuine appetite to participate in court litigation.
Unsurprisingly it is unlikely that we will ever see a collaboration between the two companies in the future or an expansion of Deliveroo’s services – it has already indicated that despite requesting the assignment of the domain name, it has no appetite for this type of products to be associated with its brand.
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