Chanel Ltd v Triton Packaging Ltd (Formerly L'Arome (UK) Ltd) & Anor

Date

27 October 1992

Legislation

s.4(1)(b) Trade Marks Act 1938

Keywords

Trade Mark; infringement; imitation perfumes; comparison chart; advertising; issue to the public

Counsel

Simon Thorley QC and Roger Wyand for the Appellants (Defendants), Pumfrey QC and Richard Arnold for the Respondents (Plaintiffs)

Solicitors:

Chaffe Street for the Appellants, Alsop Wilkinson for the Respondents

Judge:

Dillon LJ, Steyn LJ, Evans LJ.

Court:

Court of Appeal (Civil Division)

Reported:

[1993] R.P.C. 32, Times November 16, 1992.

Summary

Section 4(1)(b) of the TMA 1938 states:

"….the registration…..of a person in Part A of the register as proprietor of a trade mark ….in respect of any goods, shall if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it…in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either -

(a)….
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."

The Plaintiffs were the proprietors of several registered trade marks. The Defendants sold imitations of leading brands of perfumes by selling their products to distributors who were private individuals. The said individuals would then sell the products through various channels but often by organising parties in people’s homes. The distributors were also encouraged to recruit further distributors with the incentive that they could themselves earn commission on any of their recruit’s sales. Despite the fact that the number of distributors rose to over 180,000, the Defendants did not investigate or vet the suitability of the individuals before hiring them.

Each distributor received a kit containing amongst other things, samples of the Defendant’s perfumes and a comparison chart which set out the code numbers of the Defendant’s perfumes and listed the corresponding Chanel brand names which included the Plaintiff’s marks. The chart bore instructions to the distributor not to copy it or to show it to customers.

The Plaintiffs brought proceedings for trade mark infringement on the basis that by issuing the confidential distributor’s manual and in particular the comparison chart to their distributors, the Defendants had infringed s.4(1)(b) of the TMA 1938, or alternatively the general words of s.4(1)

The trial Judge held that the Defendants had infringed s.4(1)(b) but not the general wording of s.4(1). The Defendants appealed against the finding of infringement. They argued that the comparison chart was not an advertisement and that it had not been issued to the public since the distributors were traders in the goods rather than consumers.

Decision

• The comparison chart was an advertisement - the distributors count as a section of the public having no pre-existing connection with the trade, and the circulation to them of the chart constitutes within the wording of s.4(1)(b) "an advertisement issued to the public".
• The words "the public" did not refer solely to consumers. The issue of the chart to any section of the Community was sufficient for it to have been issued to the public within the meaning of s.4(1)(b).
• Accordingly, the appeal was dismissed.

Note that s.4 of the Trade Marks Act 1938 has been repealed in its entirety and replaced by s.10 of the Trade Marks Act 1994.