D Green & Co (Stoke Newington) Ltd v Regalzone Ltd

Date

4 May 2001

Legislation

Trade Marks Act 1938, s. 4
Trade Marks Act 1994, s. 11

Keywords

Trademark infringement; transitional provisions; non-infringing use; trade mark use

Counsel

Richard Hacon, Douglas Campbell

Solicitors:

Beckman & Beckman; Wragge & Co.

Judge:

Chadwick, Arden LJJ, Sir Martin Nourse

Court:

Court of Appeal (Civil Division)

Reported:

[2002] ETMR 22 [2001] EWCA Civ 639

Summary:

D Green was the registered proprietor of the mark SPORK, in respect of a white plastic, disposable utensil (the size and shape of a teaspoon but with three V-shaped cuts in the bowl of the spoon, so as to form the prongs of a fork), registered in respect of cutlery, forks and spoons, all included in class 8. The utensil was supplied to the general public with 'fast food' at no extra charge. D Green complained about the use of the mark SPORK by Regalzone on price lists and correspondence between Regalzone and a customer. The judge found that such use amounted to infringement of the registered trademark and Regalzone's attack on the validity of the mark was dismissed. Regalzone appealed on the question of whether use in the price lists and correspondence was infringing use.

Allowing the appeal;
Considering the position under the 1938 Act; the issue on appeal was whether the use of the word SPORK in the price lists and correspondence was use likely to be taken as trademark use. This was to be judged objectively from the view of the average recipient of the price lists or correspondence. In this case the average recipient would be a trade purchaser of disposable catering products who was reasonably observant and circumspect. The judge had asked himself the wrong question, having asked himself whether the price lists and circulars would have been understood by a number of people in the trade, and reasonably so understood, as indicating a spoon/fork manufactured by D Green.

Decision

It was held that the word SPORK had acquired a generic or descriptive meaning and would not have identified the Claimants product in the price lists or correspondence.

For similar reasons, if the matter fell to be considered under s.11(2)(b) of the 1994 Act, the use of the mark by Regalzone was not infringing use. The use was descriptive not distinctive. The claim in passing off also failed.

On the issue of trade mark use see also R v Johnstone and Arsenal FC v Reed.