Wednesday, 4 March 2020

Bundling high-class goods with cheap ones gives trade mark owner chance to sue

Repackaging goods sold under a trade mark, and bundling them for resale with third party products, can infringe the trade mark. The trade mark owner must have a legitimate reason to oppose the sales, though: this could be because the goods are being resold in cheap-looking packaging that damages the luxury cachet of the trade mark, which was the case in Brealey v Nomination de Antonio e Paolo Gensini SNC [2020] EWCA Cir 103 (3 February 2020).

The Intellectual Property Enterprise Court held that the defendant had infringed the trade mark, and now the Court of Appeal (Patten, Floyd and Arnold LJJ) has agreed. The trade mark owner also claimed for passing off, and that claim also succeeded.

That the claimant's products, charm bracelet links, were usually but not always sold in luxury packaging did not invalidate the finding that legitimate grounds existed to oppose the sales. Anyway there was no evidence about the frequency of such sales, and the judge had also found that consumers who bought the claimant's products from the claimant's own shops would have received the luxury packaging. The judge was (the appeal court thought) entitled to conclude that selling the claimant's bracelet links in blister packs and plastic bags - the antithesis, presumably, of luxury - would damage the reputation of the trade marks. Although the claimant sometimes sold goods in plastic bags, this was infrequent and did not justify the damage done to the trade marks by the defendant's activities, which deprived the trade mark owner of the opportunity to convey its luxury image to the consumers who bought from the defendant.

As for the passing-off claim, the judge had been entitled to conclude that consumers would not read the defendant's online advertisements with any great care or attention. It must have been pretty clear to the defendant that there was a risk of confusion if it did not make clear that the packages it sold contained the claimant's links as well as the defendant's. 

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