Premier Brands UK Ltd v Typhoon Europe Ltd

Date

21 January 2000

Legislation

Trade Marks Act 1994 ss10, 46

Keywords

trade mark infringement; without due cause; dilution of mark; detriment to mark; counterclaim for revocation on grounds of non-use; whether court retained any residual discretion

Counsel

Richard Arnold, Michael Bloch QC, James Abrahams

Solicitors:

Edge Ellison (Birmingham), Willoughby & Partners

Judge:

Neuberger J.

Court:

High Court (Chancery Division)

Reported:

[2000] ETMR 1071, [2000] FSR 767

Summary:

Premier Brands UK Ltd ('Premier Brands') an importer, blender and supplier of tea was the registered proprietor of three trade marks consisting of the word mark TY.PHOO, in respect of tea (in Class 30), (ii) for hand tools and hand implements for domestic use and cutlery in Class 8 and (iii) for domestic utensils and containers and combs, brushes, sponges and cleaning materials in Class 21.

The mark had been used extensively as a trademark for tea, but the other two trademarks had been the subject of defensive registrations under the Trade Marks 1938 and had been used to a much lesser extent in respect of kitchen housewares - the items of houseware being used for promotional purposes of Premier Brand's tea rather than for sale.

These 'defensive marks' had not been used across the entire width of their specifications. Premier Brands brought a claim for trademark infringement against Typhoon Europe Ltd ('Typhoon') for the use of the sign TYPHOON on oriental kitchen hardware under s.10(2) (in relation to the 'defensive marks') and s. 10(3) (in relation to the tea mark) of the Trade Marks Act 1994. Typhoon counterclaimed for revocation of the 'defensive marks'.

Decision

Dismissing the claim and partially revoking the 'defensive marks', under s.10(2) Trade Marks Act 1994 it was held that the similarity of the trademark to the sign was a distinct question from whether there was a likelihood of confusion. The judge found that at least some of the items in relation to which TEL used the TYPHOON sign were identical or similar to the category of goods in respect of which each of the defensive marks was registered. As to likelihood of confusion, the proper comparison was to be made between the proprietor's registered trademark, on the one hand, and, on the other hand, the allegedly infringing sign in the way in which it was actually used. In the absence of evidence to the contrary, the way in which the proprietor actually used the mark could be said, at the very least prima facie, to be the paradigm case of its use in a normal and fair manner. Also, the greater the exposure and use of a particular registered mark, the greater its reputation was likely to be, and therefore the greater the protection likely to be afforded to it. Despite the similarity of the mark and the sign (particularly on an aural basis), and the inherent distinctiveness of the TY.PHOO mark, it was held that the average customer for kitchenware, particularly bearing in mind that he or she is to be assumed to be reasonably well informed and reasonably observant and circumspect, would confuse the TYPHOON sign used by TEL in relation to kitchenware with the TY.PHOO mark as used in relation to the goods for which the defensive marks were registered.

Under s.10(3) Trade Marks Act 1994 the claim advanced by the Claimant on this ground consisted of two issues: whether the use of the TYPHOON sign by Typhoon could be said to be 'without due cause', and whether the use of the TYPHOON sign took unfair advantage of and/or was detrimental to the distinctive character or the repute of the TY.PHOO mark. It was held that confusion was not a necessary ingredient for a successful claim of trade mark infringement under s.10(3). The purpose of s.10(3) was to protect an acquired asset against impairment. This sort of detriment had been generically described as 'dilution', and dilution could normally occur in one of two ways, namely by 'blurring' or by 'tarnishing'. Blurring occurred where the distinctiveness of a mark was eroded whereas tarnishing referred to the impairment of the attraction and the capacity of the mark to stimulate the desire to buy, the kind of goods for which it was registered. The effect of section 10(3) was that the stronger the distinctive character and reputation of a particular mark, the easier it would be to establish detriment to it. The words 'without due cause' did not mean 'in good faith' or 'for good and honest commercial reasons'. The words did not just govern 'use of the sign' but also 'takes unfair advantage of, or is detrimental to'. It was for the defendant to show that the use of the allegedly infringing sign in connection with the defendant's goods was 'with due cause'; and also that although the use of the sign might otherwise be said to 'take unfair advantage of or is detrimental to' the mark, the advantage or detriment were not 'without due cause'. In light of the evidence and arguments, it was found that it was more likely than not that, in the minds of some consumers, there would be a degree of association between the TYPHOON sign as used by Typhoon in connection with its goods and the TY.PHOO mark in relation to tea as used by Premier Brands. However, that association would occur in comparatively few cases, in those cases, the degree of association would not be particularly strong. As well as showing an association between the allegedly infringing sign and the registered trademark, the proprietor had to show detriment. On the evidence no such detriment was established: there was no tarnishing or blurring of the uniqueness of the mark or an effect, on the commercial value of the mark.

In relation to the counterclaim for revocation it was noted that under s.100 of the Trade Marks Act 1994, the onus of establishing the stipulated use of each of the defensive marks was on Premier Brands. On the evidence it was held to be more likely than not that, members of the public on seeing the goods, (mainly used for promotional purposes) would assume that they had been marketed by, or with the approval and licence of, the person responsible for the marketing TY.PHOO tea, i.e. Premier Brands.

Where the mark had been used in respect of some of the items for which it was registered, but not in respect of others. The approach to be followed was to look at the list of items on the register and ask oneself, in relation to each such item, whether or not the mark had been used 'in relation to' or 'in connection with' that item during the past five years. If non-use of the mark had been shown for five years, the mark would be revoked and the Court did not have any residual discretion.