Primark Stores Ltd v Lollypop Clothing Ltd

Date

4 December 2000

Legislation

Trade Marks Act 1994 ss10,12.

Keywords

Trade Mark infringement; Passing off; Summary judgment; Whether fact that goods actually those of Proprietor created a defence

Counsel

James Abrahams, Andrew Bird

Solicitors:

PW Mole & Co; Shah & Burke

Judge:

John Martin QC

Court:

Chancery Division

Reported:

[2001] ETMR 30, [2001] FSR 37

Summary:

The first claimant Primark Stores Limited ('Primark') was the registered proprietor of the trade mark PRIMARK and the exclusive licensee of the trade mark DENIM COMPANY in respect of clothing. It made an application for summary judgment in a claim for trade mark infringement and passing off against Lollypop Clothing Ltd ('Lollypop'). Primark's supplier had supplied denim jeans bearing the name DENIM CO on sewn-in labels and the name PRIMARK on swing price tags, to both Primark and Lollypop.

At first blush, it seemed that the claim for trademark infringement and passing off had been established. Lollypop claimed that the fact that the denim jeans were in fact those of Primark, created an arguable defence to the claim for passing off (as there was no deception) and to the claim for trademark infringement (under sections 10(6) and 12(1) Trade Marks Act 1994).

Decision:

Giving summary judgment for Primark. It was held that although the jeans were possibly made by the supplier to Primark's specifications as part of an order placed by Primark, and that the sewn-in labels and swing tags were attached to the jeans in the process of making up the order, in order for the jeans to become Primark's goods, it was not enough that they should have been manufactured to Primark's specification. Primark must have been adopted the jeans as its goods.

Without such adoption, Primark could not be said to have accepted that it was either the source of the goods or that it accepted responsibility for their quality. On Primark's undisputed evidence, it was clear that the goods bearing its trade marks were sold only through its own outlets, and could not have been available on the market in any other way. This eliminated the possibility that the supplier had been authorised to manufacture goods for anyone else.