Key Takeaways
- The Premier Inn v Insomnia Cookies dispute highlights the importance of trade mark and passing off law for businesses in England and Wales, particularly when logos and brand elements are similar.
- Ignoring a potential trade mark conflict risks costly High Court litigation, which can last 12 to 24 months and may result in a court order to stop using contested branding, as well as damages or a forced rebrand.
- Trade mark infringement requires proof that the allegedly infringing sign is identical or similar, used for the same or similar services, and is likely to confuse the public.
- Passing off offers additional protection for brand features such as colour schemes or overall visual identity that are not registered as trade marks, but it requires evidence of goodwill, misrepresentation and damage, making claims harder and more expensive to win.
- Failing to perform early clearance searches or register all critical brand assets puts your business at risk of losing valuable brand equity or being forced into a costly rebrand.
- All businesses in England and Wales should conduct full trade mark searches before launching new brands, register relevant logos and names in all applicable classes, and keep records of their own and competitors’ use.
- If you receive a legal letter alleging infringement or observe a competitor using a similar mark, act quickly and obtain advice straight away. High Court claims can move rapidly, and a late response can hurt your defence.
- In High Court IP cases, the loser generally pays a large share of the winner’s costs (often 60 to 70 percent). Preparing for litigation is time-consuming and expensive, so early legal advice from our commercial litigation solicitors can minimise your risk.
To discuss your situation with an experienced solicitor, book a free consultation with our team.
What Does the Premier Inn v Insomnia Cookies Trade Mark Dispute Mean for UK Brand Owners?
Most business owners are surprised to learn that sharing a logo theme or colour scheme, even without copying a name, can trigger a High Court brand dispute in England and Wales. The Premier Inn v Insomnia Cookies case demonstrates how quickly overlapping branding in the hospitality and food sector can escalate, with both companies holding UK trade mark registrations and using similar crescent moon-and-stars logos in purple.
This case offers valuable legal and strategic lessons. You will learn what the High Court tests for trade mark infringement and passing off, how ignoring potential conflicts puts your brand at risk of costly rebranding, and what practical steps can help you avoid or resolve claims.
If you are concerned about a brand conflict or want to review your business identity protection, our solicitors are available to discuss your options.
You may also find our guide on business disputes helpful.
What Is the Premier Inn v Insomnia Cookies Trade Mark Dispute About?
Premier Inn Hotels Ltd has filed an ongoing trade mark infringement and passing off claim in the England and Wales High Court against Insomnia Cookies LLC, a US-headquartered retailer now expanding in the UK. The case focuses on whether Insomnia Cookies’ UK branding, including its logo (a crescent moon cookie and stars) and purple colour scheme, creates a risk of confusion or association with Premier Inn, which also uses a crescent moon and stars theme in purple.
Both companies hold UK trade mark registrations in class 43, covering food, drink and accommodation services. The legal dispute centres on whether the similarities in their wider “look and feel” are likely to mislead consumers, even though the business names differ.
No public judgment has been issued, so the outcome and legal reasoning remain to be determined by the High Court. For now, the dispute provides important guidance on IP due diligence, as conflicts can arise even among brands that appear distinct at first glance.
What Legal Tests Must Premier Inn Satisfy for Trade Mark Infringement?
A trade mark infringement claim in England and Wales requires Premier Inn to prove that Insomnia Cookies is using a sign that is identical or similar to a registered mark, for identical or similar goods or services, where such use is likely to cause confusion or association among the public.
Courts examine the “overall impression” of each mark rather than comparing individual features in isolation. The assessment is based on the perspective of the average consumer, who does not have a perfect memory and rarely compares brands side by side.
Key factors courts consider include:
- The degree of visual, aural and conceptual similarity.
- The distinctiveness and reputation of the earlier mark.
- The intended and actual use in the marketplace.
- The level of attention typically paid by the relevant public.
Although both brands are registered in class 43 (hospitality and food services), being in the same class is only a starting point. The real question is whether actual use in the market could mislead or confuse consumers.
For further insights on commercial disputes involving IP, review our article on business disputes.
How Does Passing Off Protect Brand Elements Beyond Registered Trade Marks?
Passing off is a common-law route to protect the unique identity or “get-up” of a business, especially where features such as logos, colours, or visual style are not registered as trade marks. To succeed in a passing off claim, a claimant must show:
- Goodwill or reputation attached to their goods or services in England and Wales.
- Misrepresentation by the defendant, likely to lead the public to believe there is a connection.
- Actual or likely damage to the claimant’s goodwill.
Passing off often applies when a competitor adopts a similar logo, décor or style, even without a close name match. In the Premier Inn v Insomnia Cookies case, passing off likely reinforces the trade mark claim by targeting unregistered aspects of the branding, such as the “moon-and-stars” motif or specific shades of purple.
These cases tend to require detailed evidence, such as examples of customer confusion, market surveys, or statements from customers and stakeholders.
Comparing Trade Mark Infringement vs Passing Off in UK Brand Disputes
Brand owners in England and Wales rely on both trade mark infringement and passing off to protect their identity, but the approaches differ. The table below shows the core distinctions:
| Trade Mark Infringement | Passing Off | |
|---|---|---|
| Basis | Registered right | Common law (no registration) |
| What must be proved | Similar or identical sign used without consent for similar or identical goods or services; likelihood of confusion or association | Goodwill in England and Wales, misrepresentation that deceives or confuses, damage to goodwill |
| Typical remedies | Injunctions, damages, account of profits, delivery up or destruction of infringing items, correction or removal of infringing marks | Injunctions, damages or account of profits, restrictions on use of brand elements |
Passing off is typically more expensive and requires stronger evidence—including proof of confusion. Registered trade mark owners have a simpler and usually faster route to prevent others using confusingly similar branding.
What Can Brand Owners Learn from Premier Inn v Insomnia Cookies and easyGroup v Premier Inn?
Well-publicised brand disputes such as Premier Inn v Insomnia Cookies and the easyGroup v Premier Inn High Court case offer valuable guidance on trade mark strategy and dispute risk.
In easyGroup -v- Premier Inn Hotels, the court made clear that close wording or visual resemblance, like “Rest Easy” and “easyHotel”, is not enough to prove infringement. The court looked at what the average consumer would perceive and whether marketplace confusion was likely.
For Premier Inn v Insomnia Cookies, the High Court will likely focus on whether the branding genuinely causes confusion among the public or falsely suggests a commercial link. Lessons from the easyGroup case indicate that evidence, context and consumer perception are decisive.
If you are planning brand expansion or responding to a challenge, consulting with a solicitor specialising in trade mark litigation and portfolio management can help you steer clear of disputes or resolve them efficiently.
How to Respond if Your Brand or Logo Is Challenged
Facing a legal threat over branding can feel daunting. Here is a practical guide on handling such situations:
- Gather Evidence
- Preserve screenshots, samples of your branding, product packaging and website pages.
- Collect examples of customer feedback and any indications of confusion.
- Document your brand’s history and use in England and Wales.
- Audit Your Registered Rights
- Review your own UK trade mark portfolio.
- Search the UKIPO register for relevant marks and applications by competitors.
- Get Legal Advice Before Replying
- Do not rush to respond. A poorly worded or unadvised reply can damage your strategy or trigger further action.
- Comply with Pre-Action Conduct
- Before issuing or responding to court proceedings, share enough information to clarify legal positions, and consider alternative dispute resolution.
- Explore Alternatives to Litigation
- Consider negotiation or mediation to settle disputes faster and at less risk.
- Use UKIPO opposition proceedings where available.
- For website-related disputes, domain-name procedures may help.
Want a tailored approach for your business? Book a free consultation with our team.
Three IP Due Diligence Lessons for UK Businesses from the Dispute
1. Conduct Comprehensive Clearance Searches Before Launch
Every business should perform thorough searches before launching a brand, logo or design in England and Wales. This means checking the UKIPO database, looking for pending applications, considering domain names, company names, and existing trading styles—even for businesses operating without registered marks.
2. Register All Key Brand Elements—Not Just Names
Registering your company or product name is not enough. Critical logos, colour schemes, get-up and visual styles should be protected by trade mark registration in every relevant class. Relying on passing off alone puts the burden on you to prove goodwill and confusion, increasing cost and uncertainty.
3. Implement Ongoing Brand Monitoring and Take Early Action
IP risk management is not a one-off exercise. Actively monitor new trade mark filings and what’s happening in your marketplace. Watching services can alert you to new filings that may be a threat. Early action, like trade mark oppositions, typically resolves disputes quickly and at low cost compared to full-scale litigation, which commonly involves £100,000 to £500,000 per party and can last 12 to 24 months.
Even if a business ultimately wins or a claim settles, substantial legal costs and management distraction may have been incurred. Prevention is always preferable.
To review your IP position or set up a monitoring strategy, book a free consultation with one of our solicitors.
What Remedies Are Available if Premier Inn Succeeds in the Trade Mark and Passing Off Claim?
If Premier Inn is successful, possible remedies include:
- Injunctions (temporary or permanent) to stop the competitor using the infringing logo, colour scheme or branding.
- Delivery up or destruction of materials bearing any infringing sign.
- Damages to compensate for lost sales, harm to reputation, or the licensing fees the other side ought to have paid.
- An account of profits to recover any money the defendant gained from infringing.
- Amendments to trade mark registrations that were filed in bad faith or conflict with earlier rights.
- Court orders for the losing party to pay a significant portion—often 60 to 70 percent—of the winning side’s legal costs.
- Negotiated settlements: these often involve licences, coexistence agreements, agreed rebranding, or geographic/product line-specific restrictions.
How Long Do High Court IP Disputes Take and What Do They Cost?
Most High Court trade mark and passing off disputes in England and Wales last between 12 and 24 months from the issue of proceedings to judgment, with some cases resolving earlier and others taking longer due to appeals.
Legal fees are significant—a contested trial typically costs £100,000 to £500,000 or more per party. Once the strengths and weaknesses of each case become clearer—usually after document disclosure and exchange of witness statements—many businesses choose to settle, often through mediation, to avoid the uncertainty of trial.
The loser generally pays a large proportion (usually 60 to 70 percent) of the winner’s legal costs, which creates a strong incentive to settle early and control risk.
Our Winning Approach to Brand Disputes Like Premier Inn v Insomnia Cookies
The solicitors at Go Legal combine early risk assessment, strong litigation skills, and strategic negotiation to resolve complex trade mark and passing off disputes for businesses in England and Wales. Every matter starts with a close analysis of how your brand appears in the marketplace and a robust evidence-gathering plan tailored to your commercial objectives.
Clear, practical advice, transparent cost management, and decisive action in the Business and Property Courts allow our team to protect your interests—whether that means seeking an injunction or negotiating an early settlement.
You may also find value in our article on business disputes.
Frequently Asked Questions
Can Premier Inn force Insomnia Cookies to rebrand in the UK?
Only if the High Court decides that Insomnia Cookies’ logo or branding confuses or misleads customers. If Premier Inn succeeds, the court could order Insomnia Cookies to stop using the mark and rebrand. However, most disputes settle before trial, often with coexistence or rebranding agreements.
How does the court decide if two logos or colour schemes are confusingly similar?
The court assesses the overall impression of the branding, including logos, colours, names, and their presentation to consumers. Actual confusion is significant but not required. A likelihood of confusion or mistaken association may be enough.
What evidence helps most in a trade mark infringement case?
Valuable evidence includes examples of both brands in use, customer feedback showing confusion, sales and marketing data, and consumer surveys. For passing off claims, customer statements about confusion may be especially persuasive.
Can I challenge a competitor’s mark at the UKIPO instead of going to court?
Yes. If the competitor’s trade mark application conflicts with your rights, you can file an opposition at the UKIPO. This is often faster and cheaper than court litigation, but only applies if a trade mark application is pending.
What happens if I ignore a legal letter about alleged infringement?
Ignoring a legal letter can lead to the rapid start of court proceedings, higher legal costs, and fewer chances to resolve matters amicably.
Do I need to register every new logo or visual brand update separately?
Ideally, yes. Each variation should be checked, and where it is commercially important and distinctive, registered in each relevant class to maximise protection.
How can small businesses avoid expensive trade mark litigation?
Do detailed clearance searches before launching any new brand, register your most valuable marks and designs, and act swiftly if you spot a problem in the market.
How do damages and account of profits differ in IP claims?
Damages aim to compensate for your actual losses, such as lost sales or harm to reputation. An account of profits seeks to recover the gains the infringer made from using your branding.
Is it possible to negotiate a coexistence or licensing agreement instead of going to trial?
Yes. Most disputes are resolved before final judgment, through agreed boundaries, licences, or coexistence terms, saving time and money.
Where can I check if another business has registered a logo or name I want to use?
You can check the UKIPO register (ipo.gov.uk) for current trade mark registrations and applications.
Get Expert Advice on Trade Mark and Passing Off Disputes Today
Premier Inn v Insomnia Cookies shows that even where brands compete in the same class with similar themes, infringement is not automatic. The real test is whether your branding, overall impression and usage create confusion or mislead the public. Careful clearance, robust registration, and early action are essential to protect your business from costly legal disputes.
Our solicitors at Go Legal have extensive experience enforcing and defending brands in England and Wales. If you need help with a trade mark or passing off dispute, book a free consultation or call us on 0207 459 4037 for straightforward advice and practical support.
