The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word ‘Mail’ has not acquired a descriptive meaning, and nor is there any requirement in the law of passing off that the claimant’s reputation has to be exclusive. The Mail’s reputation is substantially in London and the South East. There was likelihood of confusion, and the claim in passing off succeeded. The claimant’s trade mark specification referred to a paper to be sold, and the defendant’s paper was to be free, so there was no infringement under 10(1). The likelihood of confusion was enough to find infringement under section 10(2).
Judges:
The Hon Mr Justice Laddie
Citations:
[2003] EWHC 1322 (Ch), Times 17-Jun-2003, Gazette 14-Aug-2003, [2003] FSR 51
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited – Office Cleaning Services v Westminster Window and General Cleaning HL 1946
Where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run by him unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is . .
Cited – Coflexip SA, Coflexip Stena Offshore Ltd v Stolt Comes Seaway MS Ltd, Stolt Comex Seaway Ltd, Stolt Comex Seaway SA CA 31-Jul-2000
Any injunction to restrain passing off will need to be carefully drafted so not to give relief beyond that justified by the findings. . .
Cited – Ewing v Buttercup Margarine Co Ltd CA 1917
The plaintiff had an established retail business in Scotland and Northern England. It traded under the name Buttercup Dairy Company and was known as Buttercup Dairy or simply Buttercup. The Defendant was a new company called the Buttercup Margarine . .
Cited – Clock Ltd v Clock House Hotel Ltd 1936
. .
Cited – Office Cleaning Services v Westminster Window and General Cleaning HL 1946
Where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run by him unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is . .
Cited – Evans v Eradicure 1972
A plaintiff’s reputation in a trading style may be local not national. . .
Cited – Levey v Henderson-Kenton (Holdings) 1974
A trader’s reputation in one part of the country may be different to its reputation in another and may be protected locally. . .
Cited – Harrods Ltd v Harrodian School CA 3-Apr-1996
No passing off was to be found to have been shown without the public believing that the plaintiff was responsible for the defendant’s services or goods. It was not enough to show only that the defendant was somehow ‘behind’ the defendant. Millet LJ . .
Cited – Thomson Holidays Limited v Norwegian Cruise Line Limited CA 17-Dec-2002
Aldous LJ said: ‘Pumfrey J in the Decon case suggested that the court’s task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that . .
Cited – Societe De Produits Nestle Sa v Unilever Plc ChD 18-Dec-2002
The claimant asserted trade mark rights in the shape of its Viennetta ice cream.
Held: ‘There is another, quite different, reason why I do not regard the shape alone as having been established as a trade mark. It is not sufficiently . .
Cited – British Sugar Plc v James Roberston and Sons ChD 17-Feb-1996
The question was raised on whether, given its derivation from article 5 of the trade mark directive, non-trade mark use could be caught by sections 10(1) to (3).
Held: There was no trade mark infringement by the use of a common laudatory word. . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Cited – Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer ECJ 29-Sep-1998
In a complaint of trade mark infringement, and when comparing the mark and sign, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods/services and vice versa.
Lloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
Cited – Marca Mode CV v Adidas AG ECJ 22-Jun-2000
The reputation of a trade mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.
Europa Article 5(1)(b) of First Directive . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 01 October 2022; Ref: scu.183375