Thursday, 21 March 2013

W.S. Foster & Son Ltd v Brooks Brothers UK Ltd [2013] EWPCC 18 (21 March 2013)

You snooze, you lose is the moral of the fox and boot device story in W.S. Foster & Son Ltd v Brooks Brothers UK Ltd [2013] EWPCC 18 (21 March 2013). I feel that a brief history lesson is necessary in order to explain how the action came about. 

The claimants, W.S. Foster & Son Limited, are long-established bootmakers dating back to 1840s with premises in Jermyn Street in London. The defendants, Brooks Brothers, are the parent company of the well-known menswear group which started business from Madison Avenue in New York. They have both used the fox and boot device logo on the boots they make. The claimants brought an action for passing off as they have used the logo since 1965. It has previously been used by an English bootmaker, Peal & Co who supplied shoes to Brooks in the USA. Peals sold their business and its goodwill to Brooks in 1964. And here is where things got complicated: a former employee of Peals started to work for Foster & Son (the claimants, in case you last track) and suggested using the fox and boot device as Foster's logo. Brooks opened their first stores in the UK in 2005 and started selling shoes with the same logo. 

Brooks Brothers submitted and lost 3 main arguments, namely: 

1. That Foster's goodwill is insubstantial, it does not cover the whole of the UK and the logo itself is not distinctive enough to distinguish Foster's business in customers' minds. The Judge, Iain Purvis Q.C. disagreed with the reasoning and ruled that:
The Claimant may trade from a single set of premises. However, those premises are in Jermyn Street, the premier site in London for the sale of men's shoes and clothing. Trade from such store is not ‘local’ in the sense that it only attracts customers from the immediate locality. Furthermore, on the undisputed evidence the Claimant has customers in 75 different countries in the world.

2. That the entire sign should be taken as a whole, together with Peals' name. This argument was rejected by the Judge, who decided that the vast majority of customers would not recognise the name 'Peals', which ceased to exist in 1965. There was no evidence of actual confusion. 

3. That Brooks have built up their own goodwill in the logo since their purchase of Peals. In the Judge's opinion Brooks had failed to preserve Peal's goodwill by not using the mark immediately after taking over the business and consequently the defence of 'honest concurrent use' by Brooks cannot succeed as the fox and boot device has not been used by them since 1964.

[Written by Marta Safin but not posted by her for technical reasons!]

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