Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd
Date
11 October 1995
Legislation
Trade Marks Act 1994, s.11(2)
Keywords
infringement; trade mark use; defences
Counsel
C. McNeil, R. Mackay Q.C., S. Woolman
Solicitors
J&A Hastie; Balfour & Manson Nightingale & Bell
Judge
Lord McCluskey
Court
Court of Session (Outer House)
Reported
[1996] FSR 205
Summary
"Wet Wet Wet" was a registered trade mark for, inter alia, books. The defendant published a book about Wet Wet Wet with their name on the cover.
Decision:
- For infringement to occur, use of mark had to be in a "trade mark sense".
- Use of the word sequence to refer to the group = "use in the course of trade" = use in a trade mark sense = prima facie s.10 infringement, despite the fact that the use was necessary to describe the contents of the book.
- "Identical" in relation to goods refers to the general character of the goods as defined on the trade mark certificate. Thus use on a book was use in relation to identical goods.
- S.11 is only applicable to prima facie s.10 infringements.
- S.11 allows things with trade mark names to be referred to.
- Use of the mark fell within s.11(2)(b) as it indicated the main characteristic of the book, and was thus non-infringing use.
- The Act implements the directive, therefore look at the directive for the purpose of the act, which in this case was clearly to guarantee the origin of goods.
See the discussion of this case in R v. Johnstone.