Rumble over fish fails to make a splash in court

The goldfish saga may finally have been laid to rest with an out-of-court settlement that appears to favour both Wolff Olins and Addison. Clare Dowdy sums up the evidence

After such an explosion of moral outrage from elements of the design industry at the use of what was seen as “Addison’s goldfish” on credit cards, it may come as an anticlimax to hear that the case was settled out of court.

The case’s outcome could have set a precedent for other disputes over the infringement of registered trade marks which are identical or similar but which represent dissimilar goods or services – section three of the Trade Marks Act 1994. The row was never about the brand name, but about the similarity of the two images.

And a juicy court case might have thrashed out a few of the issues which dog the identity business and moved the debate about trade mark infringement on a step, says Michael Wolff, who was lined up as a witness for Addison.

However, nobody seems that surprised that there was an out-of-court settlement, particularly the pro-Addison camp, which predicted an outright victory in court. “Addison had a very strong case … I’m sure they would have won,” says Terence Conran, who was to have given evidence in court.

And there are still important lessons to be learnt from the dispute. “The design industry has to be more careful than in the past not to design something that treads on anyone else’s toes,” Conran cautions.

Goldbrand and Addison’s joint statement claims the settlement discussions were cordial. Indeed, Addison seems to have plenty to smile about – Wolff Olins has been instructed to modify future designs at its own cost, there is a promise of future design projects for Addison from the credit card company, and unconfirmed reports of a good cash settlement for Addison.

The consultancy’s line-up of witnesses reads like a Who’s Who for the design industry: Nick Jenkins, Jeremy Myerson, Reg Pauffley, along with Terence Conran, Rodney Fitch and Michael Wolff, were all pulled in to highlight any damage caused by the credit card image to Addison’s reputation.

“My evidence was about the belief that Addison would have been a ‘me-too’ company and would have had to change its logo,” says Conran.

But perhaps once the lawyers started digging into the history of the Goldfish brand, the prospects of a straightforward trade mark case began to fade and an out-of-court deal suited everybody.

Some of the issues surrounding the origins of the brand are decidedly murky and there are several conflicting versions of its history and true ownership.

Michael Wolff tells his version of the story, dating back to the mid-1970s when he was still at Wolff Olins: “As a concept the Goldfish had been a candidate in the early days when we were working on Bovis.” The fish was rejected in favour of the humming bird and it was not until the mid-1980s that Wolff had a goldfish photographed to use as his own identity, which he then sold on to Addison when he joined the firm.

The design parties in both camps seem to have got work out of the dispute, with Goldbrand finding or maintaining roles for all concerned. Wolff Olins stays involved with Goldbrand but will have to bear the costs of tweaking its designs to differentiate them enough from Addison’s image.

However, as there was only one offending execution of the image, those costs are not thought to be astronomical. Wolff Olins already has a stash of other versions depicting the fish in different poses to use on future cards.

Addison has been promised “a constructive working relationship” with Goldbrand, according to the joint statement, which is likely to reduce Wolff Olins’ design input on the literature side. And a perverse twist that is sure to gall Wolff Olins is the possibility that Michael Wolff will be working on future designs of Goldbrand’s images.

While no legal precedent has been set, there is still much to be learned from the dispute. Without a court case the message to the design industry is clear – do your research and don’t infringe.

There is doubt as to whether this is the end of the saga or whether other relevant issues will emerge. Industry sources suggest this settlement will not lay to rest the enmity between Addison and Wolff Olins.

As to the fish, the one pictured above is Addison’s.

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