A man in Co Down was selling Republic of Ireland ‘Tayto’ crisps in Northern Ireland and found himself to be breaching ‘Tayto’ Northern Ireland trademark. So serious was it taken that he found himself in the Northern Ireland High Court.
Mark Ferris, trading as ‘Candy Plus’ may now be liable for damages after the trademark infringement was accepted at the highcourt.
Counsel for the Hutchinson family owned firm (Formed in 1956) based in Tandragree, Co Armagh insisted it was about protecting its trademark, after he was sent four letters warning him to stop selling the Irish brand.
His lawyer argued that the Northern Ireland company was “using a very large sledgehammer to crack a very small nut” in seeking a further hearing to examine any potential financial compensation.
The Northern brand of Tayto licensed the name of the Southern brand with slightly toned down recipes, and is widely sold throughout Northern Ireland and parts of County Donegal, especially East Donegal and Inishowen.(According to some online sources – seems strange that a copyright infringment is being enforced if the product is being bought and sold in the republic by other venders)
As part of the agreement only Tayto Northern Ireland could sell in the UK. This was not an issue for the Republic of Ireland Tayto, which was content with its home market. But with mass emigration from the Republic to Britain in the 60’s and 70’s the company came to realise that they had foolishly given up a valuable export territory
Is this case about loss of potential revenue by selling the Irish Brand in the North? Is Tayto NI strong with the trademark implementation because of Brexit coming.
In 2006, Tayto (Republic of Ireland) tried to compel Irish band Toasted Heretic to destroy all copies of their album Now in New Nostalgia Flavour, which featured an image based on the trademarked “Mr Tayto” icon although the image had been used since 1988 on Toasted Heretic’s cassette album Songs for Swinging Celibates.
Over the years, Tayto (Republic of Ireland) has tried to rescind the license from their Northern competitors but to no avail. According to other reports legal experts say Brexit has given them the opportunity they need to grab back control of the valuable UK market.
Entering judgment for Tayto Northern Ireland, Mr Justice Huddleston said: “I fully accept this case is not at the higher end of the scale of either culpability or breach, but nonetheless it’s a breach and for that consequences do follow.”
Awarding costs to the company and remitting the case to a High Court master for further financial examinations, he added: “Until there’s an assessment of damages or an account of profits we are at a loss.”