When one London-based cyclist caught a close pass on camera and sent the footage to the company whose branding was covering the driver responsible's vehicle, he expected an apology and perhaps "some form of disciplinary action". Instead, he was threatened with legal action for using the company's trademark without permission.

The road.cc reader who told us about the incident initially uploaded the video to their YouTube channel (Chapona Bicyclette (link is external)) and forwarded a copy to Cornices Centre, the company whose van driver close passed him on Chelsea Embankment in November.

But, rather than an apology and "some form of disciplinary action against their driver", the road.cc reader instead received a lengthy email from a company director claiming that "unauthorised use" of their 'CORNICES CENTRE®' trademark was "confusing our customers, negatively impacting our brand reputation, and potentially harming our sales and the exclusivity of our trademark", something the company wanted addressed with prompt removal of its name from the "video content and descriptions".

If unaddressed or refused, the email seen by road.cc continued, the company said it would be "prepared to take legal action if necessary" and would "seek legal redress and claim any related expenses, including lost sales".

It also argued company advertisement on vehicles does "not imply our responsibility for incidents involving those mediums" and accused the road.cc reader of damaging their "reputation by misleading the public in your videos by focusing on our company rather than the drivers featured".

"The company could have quite easily apologised and confirmed some form of disciplinary action against their driver," the road.cc reader explained. "But instead decided to threaten me with legal action for using their trademark without permission.

"This gives me the impression that they didn't think their driver did anything wrong. Despite the video showing the van passing me within easy reach. Whilst they were concerned about brand damage of a YouTube video with 400 views at the time, it's now had 40,000 views in the past 24 hours, since word of the 'trademark infringement' got out. One might allege this has backfired.

"I'm considering legal action against Cornices Centre now, with proceeds going to a cycling charity. I don't want their money, but I would like an apology, both for the diabolical driving and their unfounded legal threats.

"I've also spoken to other regular YouTubers about this, where they've also been threatened with legal action from various brand owners. Many took down their videos entirely, thinking they were in the wrong, and they were genuinely fearful of these unfounded legal threats."

road.cc contacted Cornices Centre for comment but did not receive a reply.

The footage and subsequent email from the company has also been the subject of a video (link is external) by barrister Daniel ShenSmith on his BlackBeltBarrister YouTube channel (link is external), in which he suggests, while stressing the video is not legal advice and for educational purposes only, that "infringing use is when you are using someone else's trademark to market goods or services" and highlights Section 10 of the Trade Marks Act 1994 (link is external) which defines infringement.

"The point is, it must be used in the course of business to market goods or services," BlackBeltBarrister continued. "Unless Chapona Bicyclette is somehow marketing goods or services using this company's name, then he is not going to be infringing the trademark by the definition in the Trade Marks Act."

The barrister also points out to his viewers, 42,000 of whom have watched the video since its upload on 1 January, that the email from the Cornices Centre director explains that "the company is the owner of a registered trademark" and "whilst they are quite correct to say that the YouTube video does incorporate the trademark in video titles and descriptions, they say it is improperly used, which is not really the case because he's not, in so far as I can see, marketing any goods or services".

https://road.cc/content/news/cyclist-threatened-with-legal-action-over-close-pass-clip-305935