Aktiebolaget Volvo v Heritage (Leicester) Limited

Date

7 May 1999

Legislation

Trade Marks Act 1994, ss. 9, 10(1), 11(2)
Directive 89/104/EEC, Arts. 5, 6, 7

Keywords

trade marks; injunctions; civil proceedings; car dealerships

Counsel

Jessica Jones for the claimants, Mark Vanhegan for the defendant

Solicitors

Lovell White Durrant; Pritchard Englefield

Judge

Rattee J

Court

High Court (Chancery Division)

Reported

[2000] FSR 253; [2000] ETMR 940

Summary

The Claimants manufactured and sold Volvo cars and applied for summary judgment in relation to alleged infringements of the Volvo service mark. The Defendant, who used to be an authorised Volvo dealer, had a sign outside its premises similar to the Volvo logo which was accompanied by the words 'independent' and 'specialist' in much smaller type. A similar get up was included on the defendant’s letterhead.

The judge considered the scope of ss. 11(2)(b) and (c) of the Trade Marks Act 1994 which provides a defence to infringement for use of indications concerning the purpose and kind of services "where it is necessary to indicate the intended purpose of a… service (in particular, as accessories or spare parts)". He confirmed that the test is an objective standard and one of whether a reasonable motor service provider would think the use complained of in the present case was in accordance with honest practices in that business.

Decision

It was held that:

• infringement was prima facie made out under s.10(1) of the Trade Marks Act 1994 (identical sign/identical goods) notwithstanding that the sign of which complaint was made also incorporated the words 'independent specialist'. This decision is consistent with that in British Sugar Plc v James Robertson and Sons Limited;
• the judge considered the factual circumstances of the defendant’s use including the fact that the defendant had been an authorised Volvo dealer for a long time and that its customers knew it as such and dealt with it as such. Furthermore the defendant had written a letter to its customers including a section headed "Exciting News" which stated "as an Independent Volvo Specialist we will be able to provide you with an unrivalled service by offering you the full range of Volvo services from our fully trained Volvo staff utilising our Volvo specialist equipment";
• the judge concluded that any average reasonable customer of the defendant as a Volvo dealer receiving that letter would be unlikely to derive from it the impression that the defendant was about to cease to be a Volvo dealer; and
• the defendant's use of the word "Volvo", comprising the registered trade mark of the claimants, in the context of its having previously for so long been an authorised dealer of Volvos, was calculated to cause at least confusion in the minds of customers, and probably, indeed, also the belief that there was still, to put it at its lowest, some trading connection between the defendant and Volvo.

Consequently summary judgment was granted for the claimants.