British Sugar Plc v James Robertson & Sons Ltd

JurisdictionEngland & Wales
Judgment Date07 February 1996
Date07 February 1996
CourtChancery Division

Chancery Division

Before Mr Justice Jacob

British Sugar plc
James Robertson and Sons

Trade marks - infringement - use of comman laudatory word

No infringement over use of common laudatory word

Where a trader had registered as a trade mark a common laudatory word which he used on his product, it was not an infringement of the trade mark for another trader to use the same word in a descriptive way on another product of a different specification.

Mr Justice Jacob sitting in the Chancery Division dismissed in a reserved judgment an action by the plaintiffs, British Sugar plc, for registered trade mark infringement and allowed a counterclaim by the defendants, James Robertson and Sons, for revocation of the registration.

Section 1 of the Trade Marks Act 1994, which implemented Directive 89/104/EEC of December 21, 1988 (1989 OJ No L40/1), provides: "(1) … a `trade mark' means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings…"

Section 10 provides: "(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because (a) the sign is identical with the trade mark and is used in relation to goods and services similar to those for which the trade mark is registered … there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."

Mr David Young, QC, for the plaintiffs; Mr Graham Shipley for the defendants.

MR JUSTICE JACOB said that the plaintiffs' range of "Silver Spoon" products included a syrup called "Treat" which was for pouring over desserts, particularly ice cream. In supermarkets the squeezable plastic container of "Treat" was placed in the section for desserts and ice-cream topping. In 1992 "Treat" was registered under the Trade Marks Act 1938 as a trade mark for desserts, sauces and syrups.

The defendants used "Robertson's" for a range of jams and preserves but in 1995 they launched a new toffee-flavoured sweet spread in an oval jar labelled "Robertson's Toffee Treat". In supermarkets it was placed on the shelves for jams and preserves.

The plaintiffs did not allege passing-off but attempted to show that there was confusion between the two products and damage to their goodwill.

His Lordship said there was no evidence of confusion. The plaintiffs' product had a different purpose, topping rather than spread, and different...

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1786 cases
3 firm's commentaries
  • Own Name Defence - Dead Or Alive
    • United Kingdom
    • Mondaq United Kingdom
    • 25 October 2001 did not matter that WRA did not use "Asprey" alone. The judge held, following his earlier decision in British Sugar v James Robertson [1996] RPC 281, there had still been use of an "identical Although it was WRA that was trading, Jacob J decided to address the issue of whether an "own na......
  • New Zealand Trade Mark Case Concludes That Kiwis Will Not Confuse Port And Other Wines
    • Australia
    • Mondaq Australia
    • 23 July 2021
    ...concurrent use by the Applicant 2. Section 17(1)(a) Trade Marks Act 2002 3. Para 36 4. British Sugar PLC v James Robertson & Sons Ltd [1996] RPC281 5. Para 6. Section 10, Australian Trade Mark Act 1995 The content of this article is intended to provide a general guide to the subject matter.......
  • Wine And Wine Grapes Not Confusingly Similar, Says SCA In Trade Mark Case
    • South Africa
    • Mondaq Southafrica
    • 6 December 2013
    ...was all down to the similarity of the goods. The court referred to the old UK case of British Sugar Plc v James Robertson & Sons Ltd (1996) RPC 281, where the court said that you need to looks at factors like these: the uses of the goods; the users of the goods; the physical nature of t......
23 books & journal articles
  • South Africa : Chapter 9
    • South Africa
    • Transactions of the Centre for Business Law No. 2002-34, January 2002
    • 1 January 2002
    ...for what the plaintiff must prove in the absence ofa common field of activity, as well as British Sugar plc v James Robertson &Sons Ltd [1996] RPC 281.148 I.e. the average consumer’s perception or the likelihood of the average con-sumer to become confused. Mostert 1995: 447149 Webster and P......
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2008, December 2008
    • 1 December 2008 of the product itself. (This ‘SOAP’ for soap example was given in the English case, British Sugar Plc v James Robertson & Sons Ltd[1996] RPC 281.) The Trade Marks Act puts it in this way: a sign which is incapable of distinguishing goods or services provided in the course of trade by a......
  • Shaving the Trade Marks Directive Down to Size?
    • United Kingdom
    • The Modern Law Review No. 63-4, July 2000
    • 1 July 2000
    ...[it] hassufficient capricious alteration to enable it to acquire a secondary meaning’.4136 British Sugar Plc vJames Robertson & Sons Ltd [1996] RPC 281, 305 per Jacob J. This was said to betrue ‘at least in relation to any sign within section 3(1)(b)–(d)’.37 Such a requirement existed under......
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2014, December 2014
    • 1 December 2014
    ...of similarity. These factors may include those identified in the English High Court case of British Sugar plc v James Robertson & Sons Ltd[1996] RPC 281, such as the physical nature of the goods or services concerned, the respective uses and users of the goods or services, and the respectiv......
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