Premier Luggage & Bags Ltd v Premier Co (UK) Ltd
Date
26 March 2002
Legislation
Trade Marks Act 1994 ss. 3, 10, 11, 21
Keywords
Passing off; laudatory meaning; own name defence; counterclaim for revocation
Counsel
David Micklethwait, Simon Malynicz, John Baldwin QC, James Abrahams
Solicitors:
Nigel Adams & Co, Lawrence Graham
Judge:
Chadwick, L.J.; Sir Anthony Evans; Sir Denis Henry
Court:
Court of Appeal
Reported:
[2002] EWCA Civ 387; [2003] FSR 5
Summary:
The Defendant started to market luggage bearing swing tags marked 'pcl', and the Claimant, who had long been selling luggage under the mark PREMIER, sued for passing off. The Claimant also registered a trade mark PREMIER and sued the Defendant for infringement thereof under s10 of the Trade Marks Act 1994. The Defendant counterclaimed for threats, and for a declaration of invalidity of the Claimant's mark on grounds of lack of distinctiveness.
Decision
As to passing off, the CA held that the judge had erred in asking whether there was a risk of confusion because the defendant's name is similar to the claimant's name. The correct test was rather whether the defendant's use of his name in connection with his goods or his business will be taken as a representation that his goods or business are, or have some connection with, the goods or business of the claimant - so giving rise to harm, or the risk of harm, to the goodwill and reputation which the claimant is entitled to protect. The CA said that it was in just as good a position as the judge to assess the likelihood of the defendant's swing tags misleading the public, and given the absence of convincing evidence of actual deception, was not persuaded that there was such a likelihood.
As to trade mark infringement by the swing tags, because of the availability of the own name defence under s 11(2)(a), the Claimant had to show that the Defendant desired to take advantage of the Claimant's reputation or goodwill. Given the absence of deception, this claim failed. However, there was infringement under section 10(1) where the Defendant's salespeople introduced themselves as being from 'Premier'.
The trade mark was not invalid; it was not being used in a purely descriptive or laudatory sense, and it had acquired distinctiveness through long use by the Claimant.