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Trade Marks & Passing Off

11 South Square offers extensive experience and expertise in all aspects of trade mark prosecution and enforcement and the related tort of passing off. Members of chambers have appeared in a series of ground-breaking trade mark enforcement actions in recent years, playing a key role in the development of the modern law of the protection of brands and trade goodwill.  On trade mark matters, we regularly appear before the English courts, the General Court and the Court of Justice of the European Union, the UK Intellectual Property Office and the Appointed Person.

 

Notable Cases

Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

The Supreme Court has considered the difficult question as to when an overseas business can rely upon the goodwill in its name to restrain acts of passing off in the UK. 

The Appellants ran a very successful TV subscription service under the name “NOW TV” in Hong Kong. That service enjoyed a reputation amongst members of the Chinese speaking community in the UK and was accessed and enjoyed for free in the UK via the internet. In 2012, the Respondents launched their “NOW TV” service in the UK. The Appellants sued for passing off. The key issue was whether the Appellants could establish goodwill in the jurisdiction.

The Supreme Court reaffirmed the rule that to succeed in a passing off action it is necessary for a claimant to establish a goodwill in the jurisdiction and, to do so, it must demonstrate the presence of clients or customers in the jurisdiction for the goods and services concerned. It was held that the Appellants could not rely upon the reputation that they enjoyed in the UK. Whilst people in the UK accessed the Appellants’ services in the UK such people were not “customers” within the jurisdiction because they received the services for free. 

Michael Silverleaf QC and Kathryn Pickard appeared for the Appellants. Iain Purvis QC appeared for the Respondents.

Starbucks (HK) Limited & Anr v British Sky Broadcasting Group plc & Ors [2015] UKSC 31

 

Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

This was the trial and subsequent appeal of a complaint made by the world famous singer, Rihanna, that Topshop had infringed her rights by selling a t-shirt with her image on it and that this constituted an act of passing off. There was no claim in copyright because the photo on the t-shirt was taken by an independent photographer, and he had licensed his copyright to Topshop.  This matter has gained much media attention both because of the parties involved and because the claim itself was framed so as to cover any image of Rihanna. 

At trial, the claimants restricted their claim to a particular complaint about the image used on t-shirt, saying that it reflected particular promotional images from Rihanna’s Talk that Talk album.  They succeeded on that narrower basis.  The Court of Appeal has now upheld the first instance judgment, finding  that, with all the particular factors of the case, the sale by Topshop of the t-shirt did amount to passing off. 

Hugo Cuddigan acted for Topshop. 

Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch)

A test case concerning the ability of Trade Mark proprietors to seek orders against ISPs requiring them to block counterfeiter’s websites.  The Court gave consideration to whether it had jurisdiction to make such orders under Section 37 of the Senior Courts Act and Article 11 of the Enforcement Directive and held that it did.  The Court then considered the factors applicable to the grant of such orders as a question of discretion.  The Court held it would make orders against the ISPs in respect of a number of counterfeiters’ websites.  The orders would be subject to a “sunset” clause.

[2014] EWHC 3354 (Ch)

Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403

Interflora Inc & Anor v Marks and Spencer Plc [2014] EWCA Civ 1403

The Interflora v M&S saga goes on … and on … and on.

On 5 November 2014 the Court of Appeal gave judgment on Marks and Spencer’s appeal from the judgment of Arnold J in May 2013 that M&S’s Google Adword bidding on Interflora was an infringement of Interflora’s trade mark registration.  Arnold J had decided that M&S’s advertising triggered in response to searches for Interflora did not enable reasonably well-informed and reasonably attentive internet users to ascertain whether the products and service offered in the advertisements were being offered as part of the Interflora network.  He accordingly held that M&S had infringed Interflora’s trade mark.

The Court of Appeal decided that Arnold J had been wrong in his analysis of the legal test laid down by the CJEU in its decision in Google France and elaborated in its decision on the reference in this case in 2011.  It also decided that he had been wrong to find that initial interest confusion forms part of UK and European trade mark law.  However, it held that he had been correct in his assessment of the nature of the average internet user and correct to find that a conclusion that significant proportion of consumers were led incorrectly to believe that M&S’s delivery service was part of the Interflora network was sufficient to reach a finding of infringement.

In the light of the legal errors in Arnold J’s judgment the Court of Appeal was unable to determine whether he would have found that there was infringement had he applied the correct legal tests.  Consequently the Court decided that it would have to remit the action for a retrial on the issues and factual questions arising in that determination applying the correct legal tests.

We will update this post when the date and terms of the retrial have been fixed.

[2014] EWCA Civ 1403

Boxing Brands Ltd v Sports Direct International Plc & Ors [2014] EWHC 91 (Ch)

Boxing Brands Ltd v Sports Direct International Plc & Ors [2014] EWHC 91 (Ch)

This was the latest instalment in a long running dispute between Boxing Brands Ltd (BBL) and the Sports Direct group of companies (Sports Direct) as to the ownership of and entitlement to use the mark QUEENSBERRY. In November 2012 Sports Direct began offering various QUEENSBERRY branded clothing from their websites and selected stored. BBL, the proprietor of various trade marks for the words QUEENSBERRY and QUEENSBERRY RULES, obtained an interim injunction against Sports Direct restraining the use of the marks  QUEENSBERRY and QUEENSBERRY RULES in relation to clothing and sporting equipment until trial. Equivalent undertakings were given by BBL so as to preserve the status quo pending the trial. At the trial it was held that BBL’s QUEENSBERRY marks for clothing were valid and had been infringed by the QUEENSBERRY branded clothing sold by Sports Direct. Following the trial it emerged that Sports Direct had intended to sell other QUEENSBERRY branded products which it claimed were covered by the cross-undertaking but which had not been dealt with at trial. A further hearing was ordered to resolve the dispute in respect of these products. Birss J held that most of the products that Sports Direct had intended to sell did infringe BBL’s trade marks, however a few did not. Of these items only two (corner pads and punch bags) had actually been ordered in advance of the injunction. Although these products were covered by the cross-undertaking Birss J. declined to exercise his discretion an order an enquiry as he was not convinced that Sports Direct had ever intended to launch a free-standing equipment range, let alone one limited to the products held not to infringe.

 

[2014] EWHC 91 (Ch)

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