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
Trade marks - infringement - use of comman 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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