British Sugar Plc v James Robertson & Sons Limited
Date
7 February 1996
Legislation
Trade Marks Act 1994, s10
Keywords
trade marks; infringement; identical marks; confusion; treat; common laudatory word registered as a trade mark; use on different product did not amount to infringement of mark; question of trade mark use
Counsel
David Young QC, Graham Shipley
Solicitors
Herbert Smith; Gouldens
Judge
Jacob J
Court
High Court (Chancery Division)
Reported
[1996] RPC 281
Summary
Commonly known as the 'Treat' case. In 1992 British Sugar registered the mark TREAT in Class 30 for 'dessert sauces and syrups'. The mark was used on "Silver Spoon Treat", a syrup to be poured over desserts and in particular ice cream. The syrups were very successful and had about 50% of the ice cream topping sector of the market. In 1995 James Robertson produced a spread known as "Robertson's Toffee Treat" which came in a slightly oval jam jar, with a typical circular lid. The label was primarily dark mauve (with words such as "yum yum", "fab", "luscious") faintly legible. The key wording on this background was "Robertson's Toffee Treat" coupled with a description "Irresistibly rich toffee spread".
British Sugar brought an action for trade mark infringement against James Robertson on the basis of the inclusion of the mark TREAT as part of the name of their product. Passing off was not alleged.
Decision:
Jacob J. held that infringement was not made out and that it was unlikely that passing off would have been established either given the very different purposes for the two products. He observed that jellies and jams are usually registered in Class 29 and that the Robertson product fell outside the class of goods directly protected by the mark.
Robertsons argued that their use of the Treat sign is not use as a trade mark for the purposes of infringement because of the natural English meaning of the word. Jacob J. noted that nothing in the 1994 Act makes such a requirement for use as a trade mark (in contrast to the 1938 Act), and that there is no requirement for use as a trade mark under the harmonisation contemplated by the Trade Marks Directive (Directive 89/104) upon which the 1994 Act is based. Jacob J also noted that reference to Hansard and the statements of ministers as the 1994 Act passed through parliament are of little relevance given that the intention of parliament in enacting the 1994 Act was to implement the provisions of the Directive.
In relation to infringement he held that there was no likelihood of confusion, the products had completely different uses and were presented wholly differently. An issue arose about whether the mark TREAT was infringed by the sign ROBERTSON'S TOFFEE TREAT under s10(1) (identical mark, identical goods) on the basis that the indicium TREAT was included within the infringing sign. Jacob J held that this did not constitute infringement under s10(1).
On the question of whether two marks are identical for the purposes of infringement see also Origins Natural Resources v Origin Clothing [1995] FSR 280 and the recent decision of the ECJ in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA.
On the issue of trade mark use see also R v Johnstone and Arsenal FC v Matthew Reed.