Repair/replacement and trade marks

I covered Schütz (UK) Ltd v Werit (UK) Ltd [2010] EWHC 660 (Pat) (31 March 2010) in a podcast a long time ago, an interesting patent case raising questions about whether "cross-bottling" (not an act of enraged violence involving a glass container) amounted to an infringement of the patent that covered the plastic container in a metal cage. Werit, the bottle maker, won at first instance but lost on appeal [2011] EWCA Civ 303 (29 March 2011) and is now off to the Supreme Court. Schutz (UK) Ltd and Another v Delta Containers Ltd and Another [2011] EWHC 1173 (Pat) (5 May 2011) was a preliminary skirmish in the trade mark infringement and passing off case brought against the cross-bottler, the company that replaced the original bottles, an application for an adjournment to avoid the waste of resources that would inevitably happen if the trade mark case were decided one way then the patent case went the other way in the Supreme Court. The timetable for the trade mark case had been drawn up on the assumption that the patent case would have been disposed of by this stage, not on its way to another appeal - which would take a considerable time to resolve. But the judge (Kitchin J), as I mentioned in the May podcast, decided it was better to get on with the trial while people might still remember what the case was all about.

That has now happened, in Schütz (UK) Ltd and Another v Delta Containers Ltd and Another [2011] EWHC 1712 (Ch) (5 July 2011). Briggs J found there was infringement and passing off. Sorry, did that spoil the suspense for you? Well, this isn't supposed to be a thriller. Let's consider how he did that.

Schütz complained that Delta infringed their trade mark by selling the cross-bottled assemblies with Schütz trade marks on them. There were disclaimers, but Schütz argued that they didn't change matters. Schütz had registered UK and Community trade marks covering bottle and complete assembly. The judge considered that he had to apply an "average consumer" test, by which he did not mean consumers who occupied a position somewhere between the people who filled the containers and end users, but consumers who were "neither deficient in the requisite characteristics of being well informed, observant and circumspect, nor top performers in the demonstration of those characteristics."

Delta argued that end users are not consumers - to them, of course, the containers are merely a means to an end, and they want to consume the stuff inside. That was all very well, but the judge pointed out that if the container should fail it would be to the manufacturer of the device that the end user would direct his or her ire, and possible a complaint or claim. It would be Schütz that took the flak, even though the bottle might have been made by another and Delta might have put it in the cage. This "what if" question is the most interesting part of the judgment: it is not a simple matter. No-one would imagine that the contents of the container were anything to do with Schütz just because their trade mark appeared on the container, and the judge also distinguished the situation where a Pirelli tyre is fitted to a Ford vehicle. That does not suggest that the car was made by Pirelli, although the relative responsibilities of the manufacturers involved is no doubt better understood by the public in that situation.

The way the law deals with repairing and replacing others' products has been contentious for many years. This it seems to me is a sensible way to identify where the lines should be drawn in a dispute based on trade marks.