J and J Crombie Ltd v Nutter (Holdings) Ltd ('NH') (Asplin J;  EWHC 3459 (Ch); 11.11.13)
Asplin J dismissed an appeal by Crombie from the decision of the Hearing Officer, finding that Crombie’s UK mark for TOMMY NUTTER should be revoked for non-use, and that the Hearing Officer had been correct to reject Crombie’s opposition to the registration by NH of a UK mark for TOMMY NUTTER.
Tommy Nutter had been a high profile designer of menswear in the 1960s. NH applied for revocation, under Section 46, of Crombie's UK TOMMY NUTTER mark (which was registered for various goods in Class 25) and had applied to register the same word as a mark in its own name in the same Class.
Revocation for non-use
The Judge found that the Hearing Officer had not been wrong in his assessment of the evidence of the use made of the mark by Crombie, or in his approach to the question whether the use was 'genuine'. Various proposals to launch commemorative garments and the employment by Crombie of consultants to develop the brand, which did not come to fruition, were relevant context in which to assess genuine use, but it could not be said that they
coloured the specific examples given of alleged use of the mark by way of real commercial exploitation in the relevant market. At best, such evidence would be consistent with such exploitation if it existed.
It was accepted by Crombie that, at best, only one waistcoat in each of its stores was hung on a TOMMY NUTTER hanger in the relevant period, and the Judge agreed with the Hearing Officer that such use was merely token. The Hearing Officer had been entitled to find that the waistcoats were not sufficiently expensive and exclusive to warrant a conclusion that the market for them was a niche market in which the very limited use of the mark in relation to a very small number of items would be warranted. The Judge also held that use of the words 'Tommy Nutter' by Crombie’s sales staff when speaking to customers in store was descriptive rather than as an indicator of origin. The Hearing Officer had also been entitled to conclude that there was no evidence that double breasted suits sold by Crombie had been branded as or marked with TOMMY NUTTER, as there was no evidence to the contrary and certainly after the end of the relevant period the suits had been hung on CROMBIE hangers. Likewise, the advertisement of the offer for sale of or partnership with the brand was not use of the mark in relation to the clothing in order to create or maintain a market for the goods.
Opposition to registration of NH’s TOMMY NUTTER mark
Given the Judge’s findings in relation to non-use of Crombie's TOMMY NUTTER mark, its grounds for its opposition to the registration of NH’s mark under Sections 5(1) and 5(2) no longer arose. As regards the opposition on the basis of Section 5(4), the Judge considered it difficult to see that any reputation or goodwill attached to Crombie's goods in the market in the minds of the relevant purchasing public because: (i) the steps taken to develop the brand were all in-house and (ii) oral explanations to the public of a historic connection between Crombie and Tommy Nutter himself had been without reference to any Tommy Nutter inspired or marked garments for sale. Furthermore, given the very small number of garments sold and the few occasions on which an association had been drawn, it was difficult to conclude that any representation by NH would amount to a material misrepresentation at all, still less in the minds of a substantial proportion of the relevant public.