Origins Natural Resources Inc v Origin Clothing Ltd

Date

17 November 1994

Legislation

Trade Marks Act 1994 ss.7,10
Trade Marks Act 1938 ss. 12, 21, 26, 32

Keywords

Trade mark infringement; summary judgment; no use of trademark by the registered proprietor; bona fide intention to use trade mark; of marks

Counsel

Mary Vitoria, Murray Shanks

Solicitors:

Lane & Partners; Mahmoud & Southcombe

Judge:

Jacob J.

Court:

High Court (Chancery Division)

Reported:

[1995] FSR 280

Summary:

The Claimant, part of the Estee Lauder group, was registered as proprietor of two trade marks consisting of the word ORIGINS for clothing. The first had been assigned to it by Harley Davidson and was registered as of 1 December 1989. The second mark had a wider specification than the first and was registered on 12 February 1992. The Claimant had used the mark extensively in relation to cosmetics and to a lesser extent on clothing in the US and planned to commence similar use in the UK in 1995. The Defendant had started trading in September 1993 and had been using the mark ORIGIN as a trademark. The Claimants started proceedings for infringement of registered trademarks and brought the current application for summary judgment under Order 14 of the Rules of the Supreme Court.

Decision:

Granting the Claimant's application for summary judgment; it was held that s.10 of the Trade Marks Act 1994 presupposed that the mark was in use or would come into use. The court was required to consider notional and fair use in relation to the goods for which it was registered and then to assess a likelihood of confusion. The comparison was mark for mark.

Further, the Claimant had a sufficiently strong case, under Order 14 for Summary Judgment, that the marks were confusingly similar. The Defendant's objection that the Claimant's second mark was invalid because it covered the same goods as the first mark failed as there was no provision in the Trade Marks 1938 which prevented the registration of the same mark twice for the same goods. Also, there was no indication that required the Claimant had no bona fide intention to use the mark. There was no indication that this was 'a bogus application' designed to block an opponent's application. The Defendant did not have a defence under s.12(2) of the Trade Marks Act 1938 as that section itself did not provide a defence. The Defendant had not applied to register their mark and it was unlikely that their degree of use would provide a sufficient basis for registration under that section.