Mars GB Limited v Cadbury Limited

Date

1 April 1987

Legislation

Trade Marks Act 1938 ss. 4, 8, 11, 13

Keywords

infringement; confusion or deception; bona fide description

Counsel

William Aldous QC, Andrew Waugh, Hugh Laddie QC, David Kitchin

Solicitors:

Clifford-Turner; Herbert Smith

Judge:

Whitford, J.

Court:

Chancery Division

Reported:

[1987] RPC 387

Summary:

The plaintiff sued for infringement of its registered trade mark TREETS by the defendant's use of the sign TREAT SIZE.

Decision:

The Court considered the marks and concluded that judging by the look and sound of the marks, and considering the goods and other circumstances, that there would be neither confusion or deception caused.

Moreover it held that the sign 'TREAT SIZE' was not being used as, nor would be perceived as, a trade mark, but as an indication of a quality of the goods in question.

The defence under section 8 for 'bona fide description' therefore did not need to be considered; however, the evidence showed that whilst the sign 'TREAT SIZE' did have a descriptive element, the defendants hoped that over time it would build up a degree of distinctiveness entitling them to register it as a trade mark. The defence would have failed.

The defendant also counterclaimed to have the plaintiff's mark revoked under section 13(1)(b) and 11, but this was not made out.