British Sugar Plc v James Robertson & Sons Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 07 February 1996 |
| Date | 07 February 1996 |
| Court | Chancery Division |
Chancery Division
Before Mr Justice Jacob
British Sugar plc
and
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...
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...He cited both the views of Jacob J (as he then was) in the English High Court decision of British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 290 (“the British Sugar case”) and of Aldous LJ in the English Court of Appeal decision of Philips Electronics NV v Remington Consumer P......
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Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc.
...because they were next to or linked with the hotel: at [68], [75], [76], [77] and [79]. British Sugar plc v James Robertson & Sons Ltd [1997] ETMR 118; [1996] RPC 281 (distd) CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR (R) 975; [1998] 2 SLR 550 (distd) CIR, The v Mull......
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3 firm's commentaries
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Own Name Defence - Dead Or Alive
...it 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......
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Wine And Wine Grapes Not Confusingly Similar, Says SCA In Trade Mark Case
...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......
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New Zealand Trade Mark Case Concludes That Kiwis Will Not Confuse Port And Other Wines
...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.......
21 books & journal articles
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South Africa : Chapter 9
...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......
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Intellectual Property Law
...name 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......
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Intellectual Property Law
...contrasted with the stringent and step-wise approach which Jacob J had earlier advocated in British Sugar Plc v James Robertson & Sons Ltd[1996] RPC 281 (‘British Sugar’). In the case, the plaintiff had registered the mark ‘TREAT’ for dessert sauces and syrups and used the mark on ‘Silver S......
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TECHNICAL DISTINCTIVENESS AND THE STEP-BY-STEP APPROACH
...none of these citations actually contains the term “technical distinctiveness”. 6 See British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 and The Polo/Lauren Co LP v Shop in Department Store Pte Ltd [2006] 2 SLR(R) 690. 7 See para 2 above. 8 Budejovicky Budvar Narodni Podnik v Anh......
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