Cowshed Products Ltd v Island Origins Ltd and Others
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss QC,the |
| Judgment Date | 17 December 2010 |
| Neutral Citation | [2010] EWHC 3357 (Ch) |
| Docket Number | Case No: HC10CO4075 |
| Court | Chancery Division |
| Date | 17 December 2010 |
[2010] EWHC 3357 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
St. Dunstan's House
133-137 Fetter Lane
London EC4A 1HD
Before: His Honour Judge Birss QC
(Sitting as a Judge of the High Court)
Case No: HC10CO4075
Denise McFarland (instructed by Olswang) for the Claimant
Fiona Clark (instructed by Hansel Henson) for the Defendants
Hearing dates: 13th, 14th December 2010
His Honour Judge Birss QC:
I have before me an application notice dated 26 th November 2010 seeking an order restraining the defendants from using the brand “Jersey Cow” for a range of beauty and other products pending trial. It arises in the circumstances set out below.
The claimant (“Cowshed”) is part of the Soho House group of companies. Soho House operates a range of hotels, private clubs and spas, including amongst others a hotel called Babington House in Somerset. As part of the facilities at Babington House, a former cow shed was turned into a spa in 1998. This led to the development of a range of beauty and “lifestyle” products such as soap, shampoo, shower gel, lip balm, candles and fragrances all under a general brand “Cowshed”. Although they started at the spa at Babington House, today Cowshed products are sold much more widely. There is a Cowshed website, a number of dedicated Cowshed shops and the products are available in department stores such as Harrods, Harvey Nichols and Fenwicks. Cowshed products are also available in the Boots chain but only in 16 specific shops which include goods at the upper end of the market. The defendants suggested that Cowshed was a mass market product, using mass market in a pejorative sense. In my judgment that is not accurate. Cowshed is clearly a very successful brand of luxury beauty and skin care products.
A common theme associated with Cowshed is said to be their high quality and attractive packaging. This packaging often involves high contrast black and white images of flowers. Apparently some of the imagery derives from wall paper at Babington House. The brand is described as “quirky and innovative”. A particular characteristic of the Cowshed family of products is that the mark “Cowshed” itself is used as an umbrella mark and then a series of subsidiary brands are used which differentiate various Cowshed product ranges. These include “Lippy Cow” for lip balm, “Knackered Cow” for products designed to uplift a tired user, “Cheeky Cow” moisturiser, “Grumpy Cow” shower gel and “Horny Cow” aphrodisiac oil. Ms Moulton, Beauty Director at Vogue UK said in her witness statement that “the Cowshed and cow themed products are unique”. Ms Moulton draws attention to the predominantly black and white packaging and what she calls “the humorous cow themed product names (such as ‘knackered cow’, ‘lippy cow’ etc.)”.
Explaining a joke is rarely a good idea and a judgment is a poor place in which to do it; however it bears recording that a significant element to the claimant's overall image involves a play on the idea that referring to a woman as a cow would usually be rude. The claimant's branding exploits this joke.
Direct images of cows feature rarely in the claimant's branding. The website is the one exception. There is a picture of a cow's head visible on the site and the site's “favicon” is a small cow. A “favicon” is an icon which appears on the list of favourite sites an internet user compiles on their own browser so that the user can easily visit them again. Thus anyone who adds the Cowshed site to their personal list of favourite websites will have a cow head icon visible in their favourites list to remind them of Cowshed at all times. The floral images in the claimants branding also chimes with the cow theme at least to some extent since many of the plants depicted are the kind found near a cow's pasture—ferns, cow parsley, teasels and clover.
Today the claimant plainly has a substantial goodwill and reputation in the United Kingdom related to toiletries and beauty products. The key elements are the name “Cowshed” and the subsidiary brands associated with cows. There is also a floral element to the packaging, usually in black and white.
The claimant has about 30 registered trade marks in class 3. Class 3 is the relevant class for soaps, perfumery, essential oils, cosmetics and hair lotions. The trade marks include a registration for COWSHED dating back to 1999; marks such as CHEEKY COW, COW PAT, CURVY COW, DIRTY COW, DOZY COW, FILTHY COW, FRISKY COW, GRUMPY COW, HORNY COW, KNACKERED COW and LIPPY COW all generally filed in 2007; and some other cow related marks (e.g. BULLOCKS, COWLICK, JOIN THE HERD, UDDERLY GORGEOUS) also generally dating from 2007. Finally the claimant has a registered trade mark COW Number 2199598 filed in June 1991 and registered on 11 May 2001
The first defendant company was set up by the second and third defendants (Mr and Mrs O'Conner). The company has two employees in addition to Mr and Mrs O'Conner. Despite the name of the company (Island Origins Limited) the first defendant trades under the name “The Jersey Cow Company”. How this came about and the history of the relationship between Mr and Mrs O'Conner and Cowshed is set out below.
Through a former web design company of theirs called Ominor, Mr and Mrs O'Conner worked successfully with the claimant to redesign the Cowshed website in 2008. Mr O'Conner is member of the Soho House chain of clubs and has been described as a “fan” of Babington House. Both Mr O'Conner and his wife are members of the Cowshed website and receive Cowshed newsletters.
Although he was born in Jersey, Mr O'Conner moved to London 10 years ago after meeting his wife. In May 2009 they decided to move to Jersey and did so between September—December 2009. Mr O'Conner explains that he and his wife were inspired by Jersey in many ways. Their aim was to use local ingredients to create a range of bath and body products and to showcase the best Jersey has to offer, exporting “their” Jersey around the world. He explains that the couple's passion for Jersey, its ingredient and producers was the ethos of their brand from the outset.
In July 2009 Mr and Mrs O'Conner registered what Mr O'Conner has called a temporary name for a non trading company. The name was Gorgeous Cow Limited. It seems to me to be plain that the mark Gorgeous Cow, if it were applied to beauty products of the kind in issue here would run a high risk of passing off having regard to Cowshed's overall goodwill and reputation. Very sensibly the defendants have offered an undertaking in relation to Gorgeous Cow pending trial and I will accept that undertaking (subject to any details which need to be resolved).
Following registration of the company name Gorgeous Cow, Mr and Mrs O'Conner did register a corresponding internet domain name and for some time in 2009 into 2010 that website consisted of a single page image of a cow silhouette beneath the words “Gorgeous Cow” and “Jersey”. This image has been taken down as I understand it but in any event would be covered by the undertaking above.
The substance of the matter before me does not relate to Gorgeous Cow.
In March 2010 a new company name was registered. Mr O'Conner tried to register a number of putative names in Jersey but they were refused by the Jersey Companies Register. Refused names include Jersey Origins and The Jersey Cow Company. The name “The Jersey Cow Company” was refused on the ground that the name is a breed of cow. The name which was permitted was Island Origins Ltd, nevertheless “The Jersey Cow Company” was obviously the name the defendants had decided they wished to use. Mr O'Conner explains that Jersey has what he calls an enviable product export pedigree, including Jersey milk, cream, Jersey Royal potatoes and tomatoes and he says that Jersey cow is “an internationally known iconic breed that symbolises both purity and provenance”.
In July 2010 the first defendant registered a UK trade mark “The Jersey Cow Company” in respect of goods in class 3. In August 2010 the internet domain “thejerseycowcompany.com” was registered and the defendants started trading over the internet. I gather that since August the defendants have sold a modest amount of “The Jersey Cow Company” goods via the website (worth about £7,000). Also in August the defendants started trading in Jersey and attracted attention in the local Jersey press. In that month Jersey attracted some 162,000 visitors, mostly from the UK.
In September the defendants exhibited their range of products at a trade show in London called Top Drawer, a trade show for the gift market. They picked up a number of retail distributors. The Jersey Cow Company goods started being sold through shops in the UK in October 2010.
The Jersey Cow Company's products include toiletry products of the same general type as the claimant's but also other things like some pottery and deck chairs. The range is intended to consist of Jersey origin products and the defendants marketing places considerable emphasis on this Jersey element. However cows also play an important part in the defendants’ marketing efforts. Mrs O'Conner's initial concept related to cow silhouettes which include striking 1960s style floral wall paper print. For example a box of the defendants hair conditioner is a pale cream colour with the name at the top and then a silhouette of a cow underneath. The cow silhouette consists of a block of floral wall paper style print. A description of the product itself is under the cow. The name appears in the following manner (for the purposes of reproducing it in this judgment I have scaled the relative sizes of the text by eye.):
theJERSEY
COW
company
The colours used in the...
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