His Honour Judge Birss QC sitting in the Patents County Court (soon to be renamed the IP County Court) has offered and provided his first "preliminary non-binding opinion" on the merits of an infringement action at a case management conference (i.e. before any disclosure of documents or exchange of evidence).
This procedural innovation, if used frequently, may well lead to more IP claims settling or being discontinued at a very early stage. However, as such an opinion could be regarded as a judicial legal steer, which may assist the favoured party, the appropriateness of it being offered (even if both parties then agree to it being given) is open to question. Here the non-binding opinion was provided in a trade mark battle between the Weight Watchers' empire and a sandwich making company which branded its products "Waist Watchers" and others. The judge confirmed that the defendants were "likely to be found to infringe the claimant's trade marks".
At the case management hearing of the Weight Watchers (UK) Ltd & Ors v Love Bites Ltd & Ors  action in the Patents County Court, the judge was clearly concerned with the adequacy of the defence. Of particular concern was the defence's failure to deal with the claim of infringement under section 10(3) of the Trade Marks Act 1994 (made in the light of the reputation of the Weight Watchers' marks) in addition to the claim under section 10(2).
In light of the above, the judge asked the parties: "whether they would be willing to entertain the expression by the Court of a preliminary and non-binding opinion as to the merits of the case". Both sides said that they were so willing. The judge emphasised that this would be "a preliminary view... not intended to be binding on [the court or] ...the parties". He noted that it was "something ... which has been ventilated as a possibility that will be conducted in the Patents County Court" and that it seemed to him "that in an appropriate case it may well be a useful procedure". However he noted that in fairness to both sides, "the Patents County Court will only embark on [providing such an opinion] when both sides agree that it should be done". The judge's non-binding opinion
The judge considered the material already before him and noted that he could not at that early stage deal with the claimants' allegations that their mark would be tarnished by association with the defendants' goods or that the defendant had deliberately copied Weight Watchers' marks. However, he was able to provide his preliminary view that:
"... there is a strong case that the defendants are likely to be found to infringe the claimant's trade marks...it is highly likely that the Court will find that WAIST WATCHERS is a mark which will, in the mind of an ordinary consumer, form a link with WEIGHT WATCHERS and that link is one which will very likely cause a detriment to, or take an unfair advantage of, the distinctive character or repute of the claimants' mark."
The claimant will undoubtedly be heartened by this development which will enable it to place very firm pressure on the defendants to stop using its Waist Watchers mark. If the matter is not resolved quickly there is a good chance that the claimant will be encouraged to make an application for summary judgment of at least its section 10(3) claim. Perhaps the judge here considered that the defendants may not properly appreciate their legal position and wished to prevent the prolonging of their agony?
It is quite unusual for a case management conference to result in a written judgment; it appears likely this occurred because the judge wished to publicise the availability of such non-binding opinions. How frequently such opinions will be offered by the judge or asked for by the parties remains to be seen. Finally, it is interesting that the judge viewed the claimant's section 10(3) infringement claim as strong, despite not yet being able to form any view on whether deliberate copying of the Weight Watchers' marks had taken place. So far, the only claims of unfair advantage taking which have been successful in the English courts have involved deliberate referencing/copying by the defendant of the mark relied on. This therefore suggests that the judge may have been focussing on the other forms of harm covered by section 10(3). Those harms are detrimental to the distinctive character or reputation of the claimants' mark. As the judge noted, as a result of the defendants' activities, "the claimants will be losing control of their reputation."