A recent decision of the High Court of Justice in the United Kingdom provides some useful comments concerning the infringement of design trade-marks.

The Facts

Samuel Smith Old Brewery (“Samuel Smith”)

Samuel Smith, based in Yorkshire, is one of the oldest established and still operating breweries in the United Kingdom. It is family run and prides itself with carrying on business in a traditional manner. It operates over 200 tied public houses that are concentrated in Yorkshire, Lancashire and Nottinghamshire.

Samuel Smith brews and sells a large range of beers and other beverages. Almost all of its labels feature its registered trade-mark consisting of a stylized rose design (the Trade-mark). The Trade-mark is reproduced below.

Click here to see picture.

A white rose is the traditional symbol of the County of Yorkshire, having been the emblem of the House of York during the war of the Roses.  The Trade-mark was intended to remind consumers of Samuel Smith’s strong connection with Yorkshire. The Trade-mark has been widely used in the U.K. since the 1970s.

Cropton Brewery (“Cropton”)

Cropton was founded in 1984. It sells a range of approximately 16 types of beer, once again mainly distributed in Yorkshire.

In 2008 Cropton began to supply Marks & Spencer with a Yorkshire Bitter, a bottled beer. A copy of the entire label of the beer laid flat is reproduced below: Click here to see.

In the same year Cropton began to produce a beer in conjunction with the Yorkshire regiment. The label of the beer reproduced the cap badge image used by the regiment with the addition of the word “Warrior”. A copy of a photograph of the label laid flat is reproduced below: Click here to see.

Samuel Smith complained about Yorkshire Warrior to Cropton but did not mention Yorkshire Bitter. However an action alleging infringement of Trade-mark and passing off was brought which related to the use of both labels.

The Likelihood of Confusion

While the relevant directive and legislation uses language that is different than the Canadian Trade-marks Act, the issue to be resolved in the case is very similar.  The Court was required to determine whether there existed a likelihood of confusion on the part of the public between the registered Trade-mark and the trade-marks reproduced on the label designs of the Yorkshire Bitter and Yorkshire Warrior beers .

Crompton argued that the Trade-mark was not distinctive because of its geographical connotation. However, on reviewing the evidence the Judge was satisfied that the Trade-mark had become distinctive as a result of the lengthy period that it had been used.

Yorkshire Bitter

The Judge concluded that as far as this label was concerned, the identity of the goods and the distinctive character of the Trade-mark favoured a likelihood of confusion, but the differences between the white rose device and the Trade-mark, the remainder of the label and the identification of Cropton Brewery as the producer on the front of the label all militated against it. In addition, Samuel Smith did not adduce any evidence of weight to demonstrate a likelihood of confusion.

Samuel Smith's delay in pursuing Cropton concerning this label suggested that it did not consider that there was a real likelihood of confusion. It was inferred that Yorkshire Bitter was only included in the case because Samuel Smith thought it would look odd to pursue Yorkshire Warrior without pursuing Yorkshire Bitter.

As a result, the Judge was not persuaded that Samuel Smith had established that there was a likelihood of confusion concerning Yorkshire Bitter and the claim for infringement and passing off was dismissed.

Yorkshire Warrior

The Judge said that the identity of the goods and the distinctive character of the Trade-mark again favoured a likelihood of confusion. The white rose device on the label  was more similar to the Trade-mark, and a more a dominant element of the design, than in the case of Yorkshire Bitter. Importantly, Cropton Brewery was not identified as the producer on the front of the label. Furthermore, it was said many consumers would miss the small print identifying it on the rear of the label.

Although there was no evidence of actual confusion in practice, there was some evidence that suggested it could occur. The Judge concluded that while  the majority of consumers would not be confused, there was a likelihood that some consumers would be confused into believing either that Yorkshire Warrior was a Samuel Smith product or that it had some other connection with Samuel Smith. As a result the claim for infringement and passing off was allowed.

Comment

It is not clear that a Canadian Court would adopt quite the same approach concerning infringement.  Under the Trade-marks Act  the registration of a mark in respect of wares gives to the owner of the mark the exclusive right to the use of the mark throughout Canada in respect of the wares. The right is deemed to be infringed by a person not entitled to its use who sells wares in association with a confusing mark.  There are cases that take the position that the addition of “get up” or the fact that the plaintiff’s mark is used with other marks is not relevant.  However, the issue of confusion always needs to be resolved in cases of this type.

A Canadian court would adopt the same approach in the context of a claim for passing off.