All Rabbit but no Win

In certain circumstances it is possible for the use of an identical trade mark to not be an infringement. The High Court has recently decided on a case where the parties had used a similar mark alongside each for a substantial period of time, and in doing so the Court gave broad guidance as to how such cases will be treated in the future. The background was that Supreme Petfoods Limited had registrations for the mark SUPREME in plain word format and as part of logos. Henry Bell & Co used the word SUPREME as part of its packaging over a substantial period of time. In 2012 Henry Bell amended its packaging and extended its product line and Supreme Pet Foods complained alleging trade mark infringement and passing-off and commenced proceedings (although the passing-off claim was abandoned at trial). The main question of law before the Court was whether, where a party relies upon the use of a mark which is identical to an earlier registration, it is necessary for the trade mark owner to show that the use affects the trade mark or whether this is assumed and it is for the party defending their use to show that the use does not affect the “origin” function of the trade mark. The Court considered the law in great detail and concluded that in most cases it was to be assumed that damage would occur to the trade mark and the Defendant would need to show that the use complained of did not affect the “origin” function of the mark. Returning to the particular facts in the case, the Court suggested that because the word SUPREME was inherently non-distinctive and merely laudatory, and because the parties had co-existed for a substantial period of time, the use by Henry Bell would not affect the “origin” function. Additionally, the Defendant could rely upon the defence that the use of the word SUPREME was merely descriptive. Taking this into account, the Court found that Henry Bell did not infringe the trade marks of Supreme Petfoods. The case highlights the importance of three major points in the protection and enforcement of trade mark rights: 1) Keeping accurate records of any instances of confusion – in this case, there appeared to have been some instances of confusion (at least Supreme Petfoods argued this to be the case) but poor records had been kept. A later exercise in trying to identify confused traders seems to have been carried out in a way which did not convince the Court. 2) Taking prompt action where infringements occur – it would appear that over the years Supreme Petfoods had made a number of complaints to Henry Bell about its use of the mark SUPREME but had taken the final step of bringing proceedings. The passage of time suggested that Supreme Petfoods accepted Henry Bell’s use and this appears to have been given substantial weight in the eventual outcome. Prompt action is to be recommended to take infringements off the market as soon as possible so that a third party cannot argue at a later date that the trade mark owner accepted that the use would not affect its rights. 3) Choosing a good mark and/or being realistic about the strength of the marks - it appears that Supreme Petfoods took a slightly unreasonable view of the strength of its mark SUPREME. Whilst it was the subject of registrations, it clearly had substantial weaknesses and the Judge seemed in difficulty in finding a way to allow it to remain on the register (allowed on the basis that it had been the subject of substantial use over an extended period of time). Where a mark is weak or is made up of descriptive elements the protection of the mark will be substantially more difficult (and potentially costly). The eventual enforcement of the mark will also be more difficult because it is possible that a third party can successfully argue that its use of the identical or similar mark is merely to describe a characteristic or another use which is deemed acceptable by legalisation. That is not to say that registration of a weak mark is completely useless (and indeed in most cases registration is strongly advised), but a trade mark owner may need to be cautious over selecting the parties against whom it brings proceedings.

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