Full and frank disclosure needed for order for service out

I haven't exactly been waiting for a case on service out , but suddenly two have come along together in the manner of no 253 London buses (substitute your own favourite route number if you wish ). In Easy Group v Easy Fly [2020 ] EWHC 40 (Ch) Nugee J set aside such an order in a passing off, trade mark infringement and unlawful means conspiracy (and, you might add, kitchen sink) claim.

Unlike my previous subject, Wheat v Google (in which judgment was given the following day), there were serious issues to be tried - that wasn't the problem. The issues included where the defendant's website was targeted, whether using a trade mark in a press release made a link between the mark and the services, and whether flying an aeroplane with the trade mark on the side was an infringement.

The problem was that the claimant had failed to tell the judge everything when making the application. Its case was based on the premise that the defendant, a domestic Colombian airline,
was offering its sences in the UK and the EU. It wasn't. The court declined to treat the claim form as valid. The claimants can start again, but will only be able to claim damages for the six years before
the new claim .

Independent garage defeats manufacturer's trade mark application

Thanks to Jane Lambert and her NIPC Law blog for drawing my attention to Jaguar Land Rover Ltd v Twisted Automotive Ltd [2018] EWHC 3536 (Ch) (20 December 2018) which is a judgment of Rose J in an appeal against the 15 May 2018 (O-289-18) decision of Ms Louise White acting for the Registrar of Trade Marks. In her decision, Ms White upheld the opposition by the Respondent to the registration by the Appellant of the trademark "LR" (except for bicycles and scooters and related goods): and in her judgment Rose J dismissed the appeal. Quite right too, IMHO, although on the facts it could be a pretty close-run thing.

Twisted, who trade as specialists in Land-Rover Defender vehicles, parts and services, had no registered trade mark, so they had to rely on section 5(4)(a) of the Trade Marks Act 1994 - which in essence required them to show that they could have succeeded in a passing-off action. The main reason that I think it might have been a close-run thing was that their use only goes back to November 2015, and although the point did not detain the learned judge the appellant pointed out that the date on which the strength of the respondent's goodwill had to be measured was the application date - 23 August 2016.

JLR put forward the interesting argument that their use of the sign LR would not be a misrepresentation, because the respondent was indeed dealing in Land-Rover products. Remember that what was at issue was not (as is usually the case when manufacturers sue independent repairers) whether the respondent could use the sign, but whether the appellant could be allowed to register it. JLR were, in a sense, too late: unless the Hearing Officer had got it very wrong (a gross over-simplification of the principles set out by Arnold J in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch)) an appeal court cannot interfere, and anyway JLR's assertion that the sign would be recognised as identifying their business was just that, an assertion, unsupported by evidence. In fact, JLR had never used the sign at all. The learned judge saw no reason to interfere with the Hearing Officer's decision.

While on the face of it you might not expect such a short period of trading under the sign to create enough goodwill for a passing-off action to succeed, that didn't influence the outcome of the case. And actually in my view there could well have been enough goodwill. If (as the Mullers Margarine case tells us) goodwill is the attractive force that brings in custom, you have to take the customers as you find them. Land-Rover Defenders are specialist vehicles. Indeed, Land-Rover don't make mass-market vehicles at all, but I think there is a distinction to be drawn between its Range Rover, Discovery and Freelander ranges and the utilitarian Defender, developed from the original Land-Rover which required no fancy model name - indeed, had nothing remotely fancy about it and often attracted the adjective "agricultural", which was always meant in a good way. No-one buys a Defender as an ordinary family run-around: it is designed to do a particular job, which it does very well, and if you don't want a vehicle to do that you won't buy one. Simple. As I remarked in a slightly different context - in 2013, though it seems like only yesterday - not all car owners are the same. In that earlier post I was considering Porsche owners, but (while there might be little overlap with Defender owners) the same principle applies. We are talking about enthusiasts. "Petrolheads" might not be the right word, given that Defenders often have diesel engines, but you get my drift, don't you?

While the owner of a bog standard cooking family saloon or hatchback might not bother to understand the intricacies of the motor trade - distinguishing between manufacturer and dealer, and between authorised repairer and independent - and indeed these days might not even own their car but just lease it, we should not assume that enthusiasts are the same. They buy a Defender (or a Porsche, or whatever), not mobility. When they look for specialist services, or parts or accessories, they are quite likely to trust independent experts rather than authorised dealers.

It's a fact of life that authorised workshops only usually get to see cars under three years old. Once they reach MoT age they tend to become the preserve of independent garages. Maintenance contracts, personal leases and warranties might all contribute to extending that period of exclusivity, but as a rule the buyer of a secondhand car isn't as likely to entrust it to the authorised workshops for servicing and repair. They often cost more - sometimes a great deal more - and their up-to-date knowledge isn't particularly important if you don't have an up-to-date car. The last Defender (apart from a limited edition for the 70th anniversary in 2018 - only 150 examples) was made nearly three years ago, so Land-Rover dealers will be seeing less and less of them anyway: owners will be aware of the independent sector, and to keep their running costs proportionate to the value of their vehicle they will be inclined to use it.

Enthusiasts, such as Defender owners, should be assumed to know the value of the independent sector and to understand the differences between it and the franchised motor trade. So while this isn't how Rose J reached her decision (neither is it how the Hearing Officer Ms Louise White reached hers), I think it demonstrates that the decisions were absolutely right.

Passing-off lecture launches IPso Jure channel on YouTube

It's now over two years since a memorable dinner over which, among other things, the idea of making YouTube videos on intellectual property came up, and finally I have managed to complete the first in what I hope will be a series. It's good that one thing has now worked out well from then.

You can find the YouTube channel here and I will put a link on this blog to make it easy to find. I called this first video a brief guide to passing off, but my old friend Godfrey pointed out that 54 minutes hardly counts as brief so I amended the description (although considering the size of Christopher Wadlow's great book on the subject, 951 pages in the 4th edition and no doubt more in the 5th edition which was published last year but the publisher's website doesn't reveal how many, I think under an hour counts as brief). There's only one possible response to that, and I am delighted that Pascal is the man to quote: "Je n'ai fait celle-ci plus longue que parce que je n'ai pas eu le loisir de la faire plus courte." (Pretentious? Moi?)

I made the video using the Movie Maker program that comes as part of Windows these days (or perhaps it's an app that you have to download). It was very clunky, and I hope I can find an alternative that will make it easier to adjust the time each slide remains on screen - surely there must be a program that allows you just to drag the end of that image along the timeline to coincide with the right point in the audio file. If you're interested I will share my findings in future posts. And if you're not interested, I'll still do that but you can ignore me. If you have suggestions for suitable programs, I'd like to know!

Now that I have broken the logjam that had been building up for a long, long time, I hope I will find it easier to be briefer in future presentations. Certainly I already have several ideas for improving this video, although my next task will be to address trade marks, responding to a request I received a few months ago. But briefly!

The National Guild of Removers And Storers Ltd v Bee Moved Ltd & Ors; why the court couldn’t Bee Moved on both parts of the claim

In December last year, the Intellectual Property Enterprise Court gave judgement in proceedings for passing off brought by the National Guild of Removers and Storers against ex Guild member, Bee Moved Ltd and its two director-shareholders ([2016] EWHC 3192 (IPEC)). The claim had two parts. The first concerned an alleged misrepresentation on the defendant’s website which led customers to believe that the defendant was a Guild member. This impression was created through a ‘moving checklist’ featured on the defendant’s website targeted directly at customers. The checklist gave customers advice which included to ‘check the fine print in your moving insurance’ but most importantly, ‘use a removal company who is a member of the National Guild of Removers and Storers.’ The defendant was unable to identify anything on the website which clarified this bullet point and showed that first defendant was not a member of the claimant.

The defendants relied on evidence given by the claimant in cross-examination accepting that all Guild members either expressly state membership or use the claimant’s logo to convey membership. The defendants sought to argue any member of the public would notice the absence of the claimant’s logo and therefore not conclude any trade connection had been established. The court held that it hadn’t been established that the public would even notice the absence of such logo on the defendants’ advertising. The judge could not Bee Moved on this part of the claim and held the implied representation was damaging to the claimant’s business and goodwill.

The court dismissed the second part of the claim showing they could Bee Moved in relation to this issue. The claim related to a further advertisement that was published on a third party’s website. The difference was that this advertisement expressly stated the defendant’s membership of the Guild. However, this statement had appeared by accident as a system failure caused the website to replicate itself from an earlier version. The judge accepted that when the advertisement was initially submitted to the website, the defendant was a Guild member. Therefore, as the defendants didn't intend for the third party to show the advertisement or even be aware the advertisement was being shown, they couldn't be held liable.

The claimant’s case on passing off succeeded against all three defendants in relation to the first part of the claim and failed on the second.

Glee for the lawyers?

I hesitate to use the word "bullying" in the context of trade mark litigation of doubtful merit, because bullying is not something about which to speak or write lightly. But the expression "trade mark bullying" has entered common parlance, at least among trade mark practitioners, and I suppose that as a lexicographer - a label which I can't really fail to acknowledge - I am committed to accepting the way language is used, although under no obligation not to be critical about it.

Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455 (25 May 2016) is as unedifying a case of a big trade mark owner trying to overcome a small one irrespective of the strengths of their case as one could hope not to see. Reading this morning that the unsuccessful claimants (and unsuccessful respondents) are seeking to take the case to the Supreme Court, which one might imagine would be making lawyers rub their hands with glee, actually adds to the unedifyingness of the whole thing and makes it look more like bullying.

On 16 February the Court of Appeal dismissed Fox's appeal against a decision of Roger Wyand QC (sitting as a deputy judge) that they had infringed the claimant's earlier trade mark, leaving an appeal against the deputy judge's refusal to revoke the claimant's trade mark to be resolved. The Court of Appeal has now dismissed that appeal too. (A passing-off claim was unsuccessful at first instance, and the claimant's cross-appeal on that claim was dismissed.)

Essentially, the claim is about reverse confusion. The claimant opened the first of its (primarily) stand-up comedy clubs in 1994, and filed a trade mark application in 1999. The application was for registration of a series of two device marks, in which the word "Glee" was prominent and the difference lay in the colours. This proved to be the claimant's Achilles heel, leading to the claim that the registration was invalid.

The defendant produced a television show entitled "glee" [sic], perhaps hoping that if they didn't give the title a capital initial they might be able to argue that it wasn't trade mark use. Fat chance of that. It was first broadcast in the UK in December 2009, so the claimant's registration gave them a head start of over a decade. The claimant's registration was wide enough to cover the defendant's activities, or many of them - including merchandising and concerts. It looks like an open-and-shut case, and as far as infringement goes it is hard to see why on earth it should even have got to court let alone the Court of Appeal.

The answer lies in the fact that the likelihood of confusion - necessary, because the trade mark and the defendant's sign are merely similar,  not identical - provided an opportunity to mount a defence. Not a strong one, perhaps, but at least there was a possibility. The odd thing here is that the confusion goes in the opposite direction to what is normal. The senior mark was being confused with the (better-known) junior one. But that didn't matter: there was a likelihood of confusion, there were witnesses to attest to the fact that they had thought the club and the television programme were connected, or came from the same source, and that was all that was needed. Reverse confusion, like reverse passing off (as in Bristol Conservatories)?

Better, though, was the argument that the trade mark was invalid, that it didn't qualify as a series or even that such a series trade mark could not be registered under the terms of the directive. But that's another story which I don't have time to write at the moment. I was pleased to note from the first instance judgment that the extract from the Registry's manual shows as an example a trade mark for which I filed the original application - though it wasn't, and apparently still isn't, a series (the Registry might have adapted it to illustrate the point they wanted to make).

Starbucks (HK) v British Sky Broadcasting Group (Supreme Court)

One thing that baffled me about this case when I saw the first instance judgment ([2012] EWHC 3074 (Ch) (02 November 2012), on appeal [2013] EWCA Civ 1465 (15 November 2013)) was the claimant's name. It turns out that I should have read Arnold J's judgment more carefully, because a footnote tells the reader that "Starbucks HK’s name came from the bucks raised by the sale of Star [a Chinese-language TV station] by Richard Li’s Pacific Century group to Rupert Murdoch’s News Corporation", who of course were the parent company of the defendants in the present case. So the claimant is nothing to do with the purveyor of what my great friend Markus, from Munich, is pleased to refer to as "brown liquid", a generic beverage which he maintains is drunk on every occasion by every American, whether its is masquerading as coffee, tea, or beer or is some sort of soft drink.
Originally a trade mark infringement (and validity) and passing-off case, by the time it reached the Supreme Court (which has now handed down its judgment: [2015] UKSC 31 (13 May 2015)) it was only concerned with passing off and in particular whether it is good enough for the claimant to have international goodwill. That's a very important point in the law of passing off, so this is an interesting and (sad to admit) exciting case.
However, the outcome doesn't appear to be as exciting as I would have liked. Because they didn't actually have any paying customers in the UK, the claimants have no goodwill to protect (and having goodwill is essential for a passing-off action to lie, of course - part of Lord Oliver's classic trinity from the JIF Lemon case, Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491). Old cases show that sometimes a foreign trade can generate some goodwill in this country - taking bookings, for example - but making its TV programmes available online in the UK amounted to nothing more than advertising and created no protectable goodwill.
I am disappointed that the court should have taken such a narrow view of what constitutes goodwill. It is, of course, a tricky thing to define (and you should read my Dictionary of Intellectual Property Law to learn more on that score), but in the modern age (by which I mean on the Internet) surely businesses create what most people would recognise as goodwill by promoting their services in other jurisdictions. Goodwill is, certainly, local in nature, but I think it is time to move on from the old view of goodwill and to embrace the idea that a trade reputation (is it the same thing?) can exist without money changing hands. It is a small step from making the TV programmes available to online viewers in the UK and charging them even a small amount to watch, and it should not be on such small steps that these things turn. (But perhaps when I read the judgment carefully I will find the answer to that.)
It need not even make any difference to the final result. The court could have distinguished the old cases and held that there was protectable goodwill, but gone on to hold that no damage had been suffered. To my mind, that would be a more logical place for the law to have ended up in. I certainly don't say that the court was wrong in any way, and those old cases can't just be wished away, but I do think the ratio does not reflect what people who commonly use the world wide web expect, and the alternative route to the same result might have given a more satisfactory ride.
You can conveniently watch the hearing using these links, which I have copied from the Supremes' website:

Watch hearing
25 Mar 2015	Morning session	Afternoon session
26 Mar 2015	Morning session	Afternoon session

'via Blog this'

My favourite passing-off case

In an area of law where the cases are, almost by definition, often highly amusing, Rolls-Royce Motor Cars v Dodd [1981] FSR 519 is in a class of its own. John Dodd, the proprietor of an automatic transmission repair business, built his own car - actually taking over a rolling chassis which someone else had started and building a body on it - powered by a second-world-war vintage Rolls-Royce Merlin engine. The first iteration used an engine from a Centurion tank, rather less romantic than had it come from a Spitfire, the most celebrated machine in which the Merlin was used: the second car (its predecessor having been destroyed in a fire) had an engine from a bomber (a Mosquito, apparently). It also had a very different body style. Both cars featured a Rolls-Royce radiator grille and Spirit of Ecstasy mascot, at least until the manufacturer (whose company secretary at the time happened also to be called John Dodd) took him to court where Walton J granted an injunction to prevent passing off (referring to the car as a Rolls-Royce) and infringements of the company's trade marks.

Following the case, Mr Dodd started referring to the car as The Beast. When he promised the judge that he would change the name, Walton J asked where was Beauty. Perhaps in the eye of the beholder?

Thanks to the Internet, I find that Mr Dodd, who moved to Spain after he had breached the injunction within a couple of days (Whitford J fined him £5,000), is still running his automatic transmission repair business. Better still, YouTube has several clips of The Beast in action, including this one from an old edition of Top Gear. The embedded one below includes Mr Dodd executing a doughnut in it, sadly filmed from inside the car so you have to rely on his daughter's commentary.

Rihanna tee shirt case: Topshop lose on appeal

Fenty v Arcadia Group [2015] EWCA Civ 3  just appeared on BAILII. The Court of Appeal has upheld the decision of Birss J that the defendants committed a passing-off when they sold tee shirts bearing the image of the singer Rihanna without her consent - exacerbated by the fact that she has previously had a commercial relationship with the retailer, so there was greater scope for deception of the public than usual. It's a very important case for the developing law on character merchandising and celebrity endorsement. I will comment a bit more when I have read the judgmemt, but the BBC's report of the case is worth a look.

Moroccanoil v Miracleoil: no passing off

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014)  is a decision of Judge Hacon in what I still prefer to think of as the Patents County Court - although I need to get over that, as the change of name reflects also a change of substance. The somewhat oxymoronically-named claimant sued the supermarket for passing off when it introduced a hair oil (competing with the claimant's MOROCCANOIL hair oil) under the name ‘Miracle Oil’.
 
What's the problem? Surely the names are far enough apart? Well, it wasn't just the name: there was a word-only CTM, but claims relating to that were dropped early on for fairly obvious reasons. In the passing-off claim, the claimant alleged that the get-up and name of Aldi’s product were, in combination, too similar to those of their product. Just look at the photos in the annexes to the judgment! A substantial
number of consumers would mistake Miracle Oil for Moroccanoil, or assume that they shared a common manufacturer or that there was some other trade connection between them.


The evidence showed that the name ‘Moroccanoil’ was distinctive of the claimant's product in the UK: but the get-up without the name could never have become distinctive because it had never been before the public on its own. It was not a Jif Lemon type of case in which the public would not notice the brand name - although clearly it was an attempt to protect get-up rather than product name. The name was the important element, so that was where the goodwill in the business would be found, although the get-up also played a  part.

There was nothing to show that members of the public might assume that Miracle Oil and Moroccanoil were the same thing, that they came from the same manufacturer, or that they were otherwise commercially linked, for example by a licence. Even if any members of the public would be confused there would be too few of  them for the claimant's goodwill to be damaged.


The defendant had intended that Miracle Oil would bring Moroccanoil to mind. The judge considered it had succeeded. That it had done did not make it passing off. There might be problem with rights in the design, and the public might think the way the packaging of the one brought the other to mind to be cheeky, but that wasn't unlawful. There would be no relevant false assumption in the mind of the purchasers, not even initial interest confusion (which I thought didn't exist in European Union trade mark law anyway). Without evidence of a misrepresentation the claim failed, illustrating (if illustration were needed) of the impotence of passing off law to protect against supermarket own-brands. Perhaps copyright and designs law (especially if there had been a registered design) would have filled the gap, and a trade mark registration for the particular colour of the label would have been pretty conclusive, but on the facts of the case these items were not in the claimant's armoury. It shows how important it is, in this day and age, to ensure you collect the widest possible range of intellectual property rights - if the claimants here thought a word trade mark was going to do the job, they were sadly mistaken, and Aldi could easily what Americans might call an end run round the one distinctive mark the claimants did have.

BBC News - Oxford University wins claim against Oxford Law School

BBC News has this entertaining story which deserves a wide audience. The Oxford Law School was located in Eastleigh, Hampshire, a railway town 62 miles down the A34 and before it became a seat of legal learning famous for the first flight of the Spitfire (manufactured nearby in Southampton), as the place where Benny Hill had his first job (on Woolworth's, and his second job, as a milkman), and as the constituency of Chris Huhne before he became Steward of the Chiltern Hundreds.

The case is not yet reported on BAILII but rest assured I will let you know when I see it there. It is a judgment of Judge Janet Lambert in the trendily-renamed Intellectual Property Enterprise Court (the 'enterprise' part allowing the audit-obsessed government to tick a box somewhere, I assume). The defence seems to have been that even a moron in a hurry would not have been deceived (the BBC report elides trade mark infringement and passing off, so it is  not clear what cause of action was involved: perhaps both), which indicates that the principal ought to attend some of the School's lectures - that hypothetical individual plays no part in determining whether deception or confusion occurs. As I wrote of that phrase in my Dictionary of Intellectual Property Law:

A regrettable expression in this day and age, first used by Foster J in Morning Star Cooperative Society v Express Newspapers Limited [1979] FSR 113 (a different day and age, perhaps). The publishers of the Communist Party newspaper sought an injunction to prevent Express Newspapers from launching a new tabloid newspaper under the name The Daily Star, which was light on politics (especially of the left-wing variety) and heavy on the sort of photographic works not seen, for ideological as well as aesthetic reasons, in the Morning Star.

The judge asked whether the plaintiffs could ‘show a misrepresentation express or implied that the newspaper to be published by the defendants is connected with the plaintiffs’ business and that as a consequence damage is likely to result to the plaintiffs’ and stated that ‘if one puts the two papers side by side I for myself would find that the two papers are so different in every way that only a moron in a hurry would be misled.’

Fenty and other v Arcadia Group Brands Ltd and otehrs [2013] EWHC 2310 (Ch)

Once upon a time, I had a Lindisfarne tee-shirt of which I was rather proud. I imagine this was about the time of Fog on the Tyne - nearly as good as, though much more successful than, Nicely out of Tune. It never occurred to me that there might be some commercial connection between the band and the tee-shirt - after all, the band was in the music business, not the rag trade. Nor did the resemblance of the design of the tee-shirt to a Newcastle Brown Ale label concern me. After all, there was a significant overlap between rock music and the drinks industry - related fields of activity, to my teenaged self - and S&N (as it then was) sponsored Lindisfarne, at least to the extent of a crate of beer from time to time, so it seemed perfectly natural to mark the connection in this way.Merchandising, as we have come to know and love it, was more apparent in my other great area of interest, motor racing. Already, Colin Chapman had brought in commercial sponsorship, and at the British Grand Prix one could buy all manner of regalia from Gold Leaf Team Lotus and Yardley BRM - though most of the other teams back in the early seventies still limited their sponsorship to companies which actually supplied stuff they used in the cars, like petrol and spark plugs. So the idea of a connection between the subject and the tee-shirt must have been planted in my mind by then.
Times change. Rock bands do sponsorship deals for more than just a few bottles of beer. In motor racing, the sponsor's name usurps that of the maker of the cars. And as the world knows, in Fenty v Arcadia Group Brands Ltd [2013] EWHC 2310 (Ch) (31 July 2013),  or Rihanna v Topshop as it is better known, the popular singer succeeded in her passing off claim against the retailer which was offering garments bearing her image. In fact, it looks to me like a particularly unflattering image, but that doesn't seem to have been raised in the trial, although there might well have been a remedy had that been proved. On the other hand, it might simply be fashionable to look like that, though I cannot understand why that might be the case. And a fortiori I cannot understand why anyone might wish to hang such an image on their chest. But some people might have said the same about my Lindisfarne tee-shirt (my parents probably did, which may account for why I have no idea what became of it) so I will say no more on that topic.

As I tell my students, every passing off case (and therefore every passing off exam answer or essay) starts its legal analysis with either Advocaat or Jif Lemon, usually the latter because Lord Oliver's explanation is so much more comprehensible than Lord Diplock's. In Fenty the judge, Birss J, chose Jif. Then, very quickly, for obvious reasons (and if they aren't obvious to you read the case) it's on to Irvine v Talksport [2002] FSR 60 (at first instance, before Laddie J: the appeal is at [2003] EWCA Civ 423 (01 April 2003)). There it was established that a claim for passing off could be made out on the basis of a false endorsement: Eddie Irvine had valuable goodwill which he was entitled to protect when Talksport used his image without permission. The appeal concerned only the quantum of damages, or (looking at it the other way) how much he could have charged had they asked for his endorsement. The judge put this at about the cost of an hour of a good intellectual property QC's time: the Court of Appeal raised him by a factor of twelve-and-a-half (to £25,000), which is a pretty significant matter. The higher figure was at the bottom of the scale of what Eddie said he would expect to charge for an endorsement, famously averring (through his counsel) that he wouldn't get out of bed for less.

It probably takes a great deal more to persuade Rihanna to shake a leg. But the whole endorsement thing is still present: as the judge observed, her fans are influenced by her views on matters of fashion, and follow her lead, so that her endorsement of a fashion item will be very influential, and therefore valuable - which is why she has struck a number of deals with clothing manufacturers and others to give such endorsements, usually in the form of her name or a stylised letter R being attached to the goods.

Topshop argued that there was no misrepresentation. In the judge's words, "Customers buy it because they like the product and the image for their own qualities". I find that hard to believe: it is quite contrary to my experience that anyone would wear a garment depicting a celebrity who they did not like. Tee-shirts and the like (and the garment in suit, described as "a 'boyfriend style tank' (i.e. an oversized sleeveless t-shirt)"is probably best categorised as "like" a tee-shirt) usually convey some sort of message, like this one or the shirt currently in that shop's window, which reproduces a letter to the Governor of the Bank of England about the proprietor's difficulties in securing a bank loan.
In the present case, it was important that the image used was from a particular photo-shoot which meant that it resembled one of Rihanna's album covers. It was also relevant that Topshop courted celebrities, and had put on promotional events with Rihanna in the past - so the public would be receptive to the idea that there might be an endorsement here. The garment and its swing tag were completely lacking in any reference to Rihanna (although the garment had been sold online under the rubric "RIHANNA TANK", a point which the judge regarded as making no difference). Customers would, the judge decided, buy the garment having been deceived into thinking that it was duly authorised by their icon. He went on to conclude:

75. The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off.  However the sale of this image of this person on this garment by this shop in these circumstances is a different matter.  I find that Topshop’s sale of this Rihanna t-shirt without her approval was an act of passing off.  I find for the claimants. 

Mishcon de Reya, Topshop's solicitors, say  that their client will be seeking leave to appeal. Leave, one might think, to throw more good money after bad. It seems to me (a safe distance from the case, of course, and therefore unaware of all sorts of things that might make me think otherwise) that in the light of Irvine Topshop's defence was doomed to failure. Birss J's judgment is not a major development of the law of passing off: it seems to me to be a smaller step from Irvine than Irvine was from the cases that had gone before. Of course the judgment is fact-specific, and the sale by a trader of a garment bearing the image of a famous person will not always be passing off. But it seems to me that you could change the facts quite a lot and still be in the passing-off zone.
This strikes me as a clear-cut case of passing off, and one which happily makes arguments for the introduction of some ludicrous new image or personality right, like the Guernsey Lawyers' Welfare Ordinance, less compelling than otherwise they might have been.

The right sort of confusion

On 31 July last year, Hildyard J found the defendants, Okotoks Ltd, liable for passing off and infringement of a Community trade mark (not available on Bailii, as far as I can see): the contest was FINE & COUNTRY v FINE for estate agents. The defendants are better known under the name "haart" which we must all have seen on estate agents' boards, and (if you are anything like me) wondered about. In Okotoks Ltd & Anor v Fine & Country Ltd & Ors [2013] EWCA Civ 672 (14 June 2013) the Court of Appeal upheld that judgment.

The defendants argued that, even if (as the judge had found) there was a likelihood of confusion between the CTM and their sign, it was a type of confusion that public policy tolerates - "good confusion", if you will, as I certainly do, because that looks like quite a nice turn of phrase - because it refers to the quality of what the business concerned has to offer. It is laudatory: it tells you that they are selling high-quality properties (though if they are new and have one bedroom they will be smaller than elsewhere in Europe). For several reasons the judge did not think that the confusion was tolerable, and the Court of Appeal agreed. It also agreed on the passing off point.


The leading judgment (that of Lewison LJ) runs to 125 paragraphs, 40 pages, and I haven't found anything in it that I need particularly to draw to your attention - all good stuff, but nothing earth-shattering, even just the slightest bit of shattering. However, I should point you to the IPKat, who picks up on the point that the trial judge was said by the Court of Appeal to have got some things wrong, and who asks some questions about when the Court of Appeal may substitute its understanding of the facts for those of the judge (especially in the light of the recent Lumos judgment, in which Lloyd LJ also sat). See here where there is also a link to the Kat's report of the first instance judgment.

Button Moon creator wins in PCC

Button Moon (Photo credit: Wikipedia)

The BBC reports that Ian Allen, the creator of the children's TV series Button Moon which entertained at least some of my daughters all those years ago, has won a copyright infringement case in the Patents County Court. In fact it was a passing off case too (as you might well guess after reading the BBC piece), decided by Miss Recorder Amanda Michaels last week. I wonder whether this is Amanda's first published judgment? The case is Allen v Redshaw [2013] EWPCC B1 (15 May 2013) and I don't think it contains anything groundbreaking. The mere fact that the BBC reported it on their website is reason enough to mention it here, though.

It turns out that it isn't her first published judgment: I find there are a couple in the same piece of litigation, Ghias (t/a Griller) v Ikram (t/a the Griller Original) & Ors [2012] EWPCC 4 (26 January 2012) and [2012] EWPCC 3 (24 January 2012).

After the Hundred Years War - the War of the Roses

And it seems to have ended in a draw. A bit early to say, as I can't read 46 pages, 164 paragraphs, of a judgment that quickly, but cutting to the chase it looks like honours are pretty even. Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch) (22 July 2011) is a trade mark infringement and passing off case. The protagonists are two Yorkshire breweries, Sam's being the oldest in the county (established in 1758, according to Wikipedia: now it might be more accurate to call the company Humphrey's for short, as Humphrey Smith is joint managing director, with his brother Oliver, and Humphrey seems to be the target of many critical comments) while Cropton (named after the village in which the brewery is located) is a relative newcomer having been established in 1984. Both make that once-rare thing, real ale, although I imagine that Sam (whose products I have found as far away as Seattle) makes considerably more of it.

Sam has a number of registered trade marks, one of which comprises a stylised white rose design, others of which include a white rose. Hardly a matter for surprise, in Yorkshire: for those unfamiliar with historic rivalries in the north of England (relatively speaking - we are talking about the area south of the Tees here) the white rose is the symbol of the House of York, and the red rose of the House of Lancaster. The Wars of the Roses speak volumes about the cordiality of relations between them.

These latter-day all-white Wars of the Roses erupted when Cropton began brewing two beers which clearly announced their Yorksire origins. There's Yorkshire Bitter, a bottled beer made for Marks & Spencer, and a draught and bottled beer which it called Yorkshire Warrior, profits from which go to the Yorkshire Regiment Benevolent Fund. All well and good - very commendable - but the white rose featured on both labels. The Warrior label incorporated the regimental colours of the Yorkshire Regiment, which - unsurprisingly - featured a white rose.

There was also a groundless threats claim or two.

Arnold J, who might justifiably be nicknamed Solomon after this effort, held that: 

i) Cropton Brewery has not infringed the Trade Mark by use of the Yorkshire Bitter label;
ii) Cropton Brewery has infringed the Trade Mark pursuant to Article 5(1)(b) by use of the Yorkshire Warrior label;
iii) Cropton Brewery has a defence in respect of its infringement of the Trade Mark by use of the Yorkshire Warrior label under Article 6(1)(b) in respect of the period to the end of October 2009, but not subsequently;
iv) Samuel Smith’s claim for passing off succeeds in relation to the Yorkshire Warrior label, but not the Yorkshire Bitter label;
v) The letter dated 10  December 2007 is an unjustifiable threat but Cropton Brewery is not “a person aggrieved” by it, while the letter dated 7 July 2010 is not a threat of infringement proceedings.

It all brings to mind an earlier - much earlier - trade mark case from the same part of the country: YORK TM [1982]. FSR 111, the last word (until the 1938 Act was repealed) on the unsuitability of geographical names as trade marks. Of course, a white rose might not be seen as a geographical indication, but this stylised design says "York" (House, city or county of) pretty clearly to a large number of people. A white rose is, at least, highly descriptive of anything connected with that part of the world, almost as much as the word - although there was no challenge to the validity of the key trade mark. Does this smack of absolutism - a trade mark bully trying to monopolise a sign that should be available for others to use too? Perhaps: and the excuse that the directors of a company have a duty to their shareholders to take advantage of what trade mark law offers doesn't apply here in quite the same way - in fact, the claimant is a private unlimited company.

The Yorkshire Bitter dispute was settled when Marks & Spencer agreed to change the label to remove the rose - which, when first approached by the claimant, they had argued was a very different white rose anyway. It was the claimant's first approach to M&S that was the first threat complained of. The Warrior dispute was decided by the fact that the defendant thought it had the permission needed to use the regimental badge - but the regiment itself had no authority to grant permission, so once that came out and the permission that had wrongly been given was withdrawn any further use became an infringement.

Well, still much to get out of reading this judgment - and I'll reassess the outcome: not as equal as I thought. Samuel Smith seems to have got just about everything it wanted in the litigation. In the court of public opinion, though, the comments I linked to above show that it has lost big time, and I'll certainly be choosing alternatives to their products in the future - as if that'll bother them.

Cipriani: using your own name

Hotel Cipriani SRL have, I find, been in the law reports before, in fact just last month. The day before yesterday Mr Justice Arnold gave judgment in a major trade mark infringement and passing off case involving the same company, Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others [2008] EWHC 3032 (Ch), not yet on Bailii, although there are state aid cases and other exciting reports of Cipriani litigation). It's an old story: family sets up business, sells out to another (usually larger, multinational, corporate) party with little sense of history and none of humour, then another member of the family sets up another business (perhaps a long way away) under the family name, and gets sued by the humourless multinational.

Humour and trade mark ownership, of course, rarely go together. I often tell my audiences on training courses that trade mark owners must suspend their senses of humour: if you have a well-known trade mark (and I don't mean that in the specialised Paris Convention sense, necessarily, especially because no-one really knows what that means anyway) you have to wield a big stick at every pizza restaurant, night club, escort agency, one-man building firm or teenage computer programmer who threatens the distinguishing function or (which is sometimes different) value of your trade mark. So I am not criticising the Italian company (actually, that should be plural as there were three claimants in the action, according to the IPKat), rather the mindset that places the protection of every little bit of intellectual property above more conventional forms of competition.

Well, perhaps that isn't happening here, but it's not a case where I feel instinctively that the IP owner was in the right. Maybe that's because I was acting a couple of years ago in a similar dispute - also in the hospitality industry, as we should now call it - and my client was on the receiving end. There, the nasty corporate had a Community trade mark but no discernible intention of trading in the Community. They were carving out an exclusive position that they might never wish to exploit: and meanwhile there were businesses in the Community with legitimate reasons to use the same name - indeed, like the Cipriani case, there was a "common origin" issue.

In the present case, the defendant's restaurant was called Cipriani London and usually referred to (there being little need most of the time to identify the city) as just Cipriani (as its website does this morning, though probably not for long). The claimants were companies in the Orient Express group. Both the Venice and the London establishments were set up by members of the family, though the Venice hotel had been sold on some time ago (on terms that don't seem to have protected the family's rights to carry on using its name, though perhaps that was just not on offer at the time) and the London restaurant is owned by a group of companies of which the most important was Cipriani (Grosvenor Street) Limited.

The defendants conceded that their activities were prima facie infringements, but that they could use their own name (section 11 of the Trade Marks Act 1994). The judge held that there was an infringement as the distinctive element in the defendant's sign was the name Cipriani, and then went on to say that the "own name" defence was not available because Cipriani was the company's trading name, not its own name. This is difficult to grasp without the full judgment: would the answer have been different had the company been Cipriani Limited? Surely if Cipriani is the distinctive part of the trading style ("London" adding nothing), it is also the distinctive part of the company name, "(Grosvenor Street)" adding nothing (though the address is Davies Street, incidentally) and "Limited" not making a ha'porth of difference. Had the defence applied, the judge didn't think it would extend to the trading name anyway.

The claimants also won on passing-off, as they had customers here when the restaurant opened and had foreign customers who booked direct (although i don't understand quite what difference that makes). They had a substantial reputation her, and more importantly they had valuable goodwill too.

There is a lot about this case that will require careful thought when the judgment becomes publicly available. It is more than an example of David losing out to Goliath, though it does not seem to be one of those cases of over-reaching intellectual property rights that trouble me so often. Perhaps what my reaction comes down to is an instinctive sense that customers will patronise all the four establishments concerned on the strength of the Cipriani name, and the connection between the family and the Orient Express businesses will never go away completely. The parties, like parties to similar disputes including that of my former client, should learn to live with it: no-one needs a monopoly over a mere name.

The Court of Appeal [2010] EWCA Civ 110 upheld Arnold J’s judgment (24 February 2010), though Lloyd LJ expressed some reservations about the ‘direct bookings’ test, which he thought might in the Internet age be outmoded although the case before him did not provide an opportunity to deal with the matter.