A recent High Court decision(1) not only demonstrates the difficulty for trademark owners in enforcing descriptive trademarks (and the risk that those trademarks may be found invalid), but also highlights potential pitfalls where trademarks coexist within the same market. Also of interest is the judge's criticism of the Court of Appeal decision in Interflora with regard to the burden of proof for 'double identity' cases.
In 1990 Supreme Petfoods (SP) launched a muesli rabbit food which it marketed using a cartoon character called Russel Rabbit. On its packaging was the word 'supreme' in a banner. The success of that product led to the introduction of a larger range of muesli pet food products, including Gerty Guinea Pig, each of which was sold in similar packaging to that of Russel Rabbit but using different colouring and cartoon characters. Between 2003 and 2007 SP registered five Community and UK trademarks consisting of or including the word 'supreme'.
Defendant Henry Bell (HB) and its predecessors had marketed a product called Mr Johnson's Supreme Rabbit Mix since 1994. SP originally contacted HB's predecessors in October 1994 to ask it to delete the word 'supreme' from a banner on the packaging or to delete the banner, but did not ask them to stop using the word itself. HB subsequently dropped the banner, but continued to use the word 'supreme' on various products.
In 2012 HB extended its range of 'supreme' pet foods and redesigned the packaging. SP complained about the use of the word 'supreme' in the name Mr Johnson's Supreme Rabbit Mix and sued for trademark infringement and passing off.
The court dismissed the trademark infringement and passing-off claims, finding that HB's use of 'supreme' would be understood by pet owners to be descriptive or laudatory, given its dictionary definition meaning of "the highest quality". Three of SP's SUPREME marks were therefore found to be invalidly registered, save in relation to small animal food, where the marks had acquired a "slender degree" of distinctive character. However, SP's UK and Community stylised ribbon marks were validly registered.
Further, HB's use of the sign amounted to honest concurrent use, as the sign had been used on products for more than two decades without causing confusion.
The judge took the opportunity to consider where the burden of proof in demonstrating prejudice to trademark functions lies. Notably, he disagreed with the Court of Appeal decision in Interflora Inc v Marks & Spencer plc (which itself overturned the High Court judge's decision at first instance) that, in double identity cases, the burden falls on the trademark owner. Instead, he considered that once the trademark owner has satisfied the first five conditions under Article 5(1)(a) of the EU Trademarks Directive (2008/95/EC), the burden of proof shifts to the defendant to show that its use has not resulted in prejudice.
The decision shows how trademark coexistence can become problematic when one party decides to overhaul or extend its product range. It also illustrates the pitfalls of seeking to enforce descriptive trademarks, running the risk of an invalidity counterclaim (which SP successfully defended only in relation to small animal food by evidencing a "slender degree" of distinctive character).
As practical guidance, brand owners should be aware of competitors' use of trademarks and any changes introduced and, if appropriate, try to agree commercial solutions. As can be seen from this decision, initiating litigation – particularly when relying on relatively generic trademarks – can be costly, not only financially but also to the validity of the trademarks themselves.
For further information on this topic please contact Jeremy Drew or Georgia Davis at RPC by telephone (+44 20 3060 6000) or email (firstname.lastname@example.org or email@example.com). The RPC website can be accessed at www.rpc.co.uk.
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