L'Oréal (UK) Ltd & Another v Johnson & Johnson & another
Date
7 March 2000
Legislation
Trade Marks Act 1994 s.21
Civil Procedure Rules 1998 Part 24 and Schedule 1 (RSC Order 58)
Keywords
Unjustified threats; Delphic utterances; declaratory relief; inherent jurisdiction of the Court
Counsel
Richard Arnold, Ashurst Morris Crisp
Solicitors:
White & Case; Ashurst Morris Crisp
Judge:
Lightman J.
Court:
High Court (Chancery Division)
Reported:
[2000] ETMR 691, [2000] FSR 686
Summary:
The Claimants were manufactures and suppliers of hair products and in April 1999 launched a range of children's hair care products carrying the statement "No Tears! No Knots!". The Defendant was the registered proprietor in the UK and Ireland of the trade marks "Johnson's No More Tears" and "No More Tears" for baby shampoos. The Defendant (through its Irish subsidiary) brought proceedings for trade mark infringement before the High Court of Ireland and the Claimants, whilst resisting the Irish infringement action, sought assurances from the Defendant that no similar proceedings would be initiated in the UK. The Defendants were not prepared to give such assurances and the Claimants therefore brought and action for unjustified threats and a declaration of non-infringement.
The Claimant's claim was struck out at first instance by Master Bragge and reheard on appeal (under RSC Order 58 as part of Schedule 1 to the Civil Procedure Rules). Lightman J. considered the case in light of the court's jurisdiction under both s.21 of the Trade Mark Act 1994, in respect of unjustified threats of infringement, and its inherent jurisdiction to grant declaratory relief.
Decision:
Having found that the letter sent by the Defendants' solicitors was "the work of a master of Delphic utterances" and had, quite understandably, been regarded as a threat of infringement proceedings. Accordingly, the judge was prepared to grant the Claimants' declaration under s.21 of the Act.
Furthermore, even if the Defendants' letter had not amounted to a threat the judge would have allowed the claims under the inherent jurisdiction of the court to grant declaratory relief, the judge noting that Defendants brought this on themselves by writing a "clever letter" so close to the line between what is and what is not a threat.