H Young (Operations) Ltd v Medici Ltd

CourtChancery Division
Docket NumberCase No: HC 02 C01688
JudgeMR JUSTICE JACOB
Judgment Date14 Jul 2003
JurisdictionEngland & Wales
Neutral Citation[2003] EWHC 1589 (Ch)

[2003] EWHC 1589 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before

The Honourable Mr Justice Jacob

Case No: HC 02 C01688

Between
H Young (operations Ltd)
Claimant
and
Medici Ltd
Defendant

Philip Roberts (instructed by Messrs Willoughby & Partners) for the Claimant

James Mellor (instructed by Messrs Picton Howell) for the Defendant

Hearing dates: 12/13/14/15 May 2003

APPROVED JUDGMENT

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

The Hon. Mr Justice Jacob

MR JUSTICE JACOB

MR JUSTICE JACOB:

1

H Young (Operations) Ltd sue Medici Ltd for infringement of registered trade mark and passing off. Medici counterclaim for partial revocation of the registered trade mark on the grounds of non-use.

THE WITNESSES

2

Some witnesses gave evidence live, some by witness statements accepted without cross-examination and some by hearsay statements. They consisted of people from both companies, independent shopkeepers and some members of the public. There was no real conflict of evidence – merely in some cases different perspectives of the nature of the parties' respective goods. These differences are entirely understandable because differing shopkeepers and members of the public may have different perceptions, all of which are entirely reasonable. In view of the lack of conflict I do not propose to over-elaborate this judgment with detailed reference to the evidence. I just summarise the overall effect.

THE CLAIMANTS

3

The claimants are the successors in title to a company called Animal Ltd. This in turn was the successor in title to a business started by two surfers in 1986/87. The business uses the trade mark "Animal". Initially it sold watch straps and T-shirts. Over the years its range of products extended in a manner in which I have to consider in more detail below.

4

Initially the business was very much focussed on customers interested in surfing (water not the net). Although the business has expanded the goods have always carried some sort of "surf connection". By this I do not mean that the goods sold have been for specialist use while actually surfing (for instance wetsuits) but that there has been an association with surfing in the sense that the target customers have been young (mainly below 30 and often below 20) and have wanted to convey in their garments an association with surfing. Of course the "Animal" brand is not unique in this sort of thing. Other brands, some better known, have done much the same sort of thing. One does not need evidence to know that, for instance "Fred Perry" garments, although originally specifically for tennis are now common casual wear. Indeed sportswear, or names associated with sports, is often now just part of the clothes of people you see every day in the street. Popular other examples, not so much associated with a particular sport, are "Nike" and "Adidas". Over the years the "Animal" business expanded – again a matter I shall have to consider in more detail.

5

In March 1997 Animal Ltd registered "Animal" as a trade mark under number 2054886. The specifications of goods are as follows:

"Class 09:

Protective headwear, spectacles, sunglasses, retainers for spectacles, retainers for sports spectacles and sunglasses.

Class 14:

Jewellery, watch straps, watches, clocks and horological instruments, key rings; but not including goods in the form of animals.

Class 16:

Printed matter, photographs, books, leaflets, adhesive stickers, labels, posters, stationery, cardboard articles; but not including goods bearing representations of, or relating to, animals.

Class 18:

Bags, backpacks, rucksacks, wallets and purses, straps, belts, keycases.

Class 20:

Display stands, display boards, picture frames, cabinets, dispensers, frames, shelves, keyboards for hanging keys, boxes and packaging containers.

Class 25:

Clothing, footwear, headgear, baseball caps, sweatshirts, T-shirts."

THE DEFENDANTS

6

The defendants are an English company whose moving spirit is a Mr Goodman. Medici produces and imports a collection of ladies' fashion for wholesale to the United Kingdom market. Its business is essentially for elegant ladies' fashion. One of the ranges which it imports goes under the trade mark "Animale". This is pronounced in various ways – "-al", "-arl", "-arlie", and perhaps others. This is hardly surprising. One cannot expect all customers and potential customers to react identically to a word such as this. The man behind this range is a Mr Ruc who lives in Indonesia. "Animale" has, I was told, success outside the T.JK. For instance it is quite widely advertised and known in France.

7

Medici's main target market is the middle aged to older lady, particularly one looking for a dress or outfit for a special occasion. The "Animale" product is aimed at the younger end of Medici's target market, ladies of 30–35 plus. The garments are simultaneously elegant and casual, the sort of thing that might be worn at a wedding, a casual dinner party of the middle class, perhaps particularly in summer or on the promenade in Nice or Torquay. Much of the range is designed to be coordinated, that is to say one item may well go with another, though of course many women buy clothes which can be used either individually or with other garments. The garments are not very expensive.

8

Medici's customers by and large consist of small individual shops. They do not sell to large chains or through mail order. I have, for instance, in this case a number of witness statements (mainly admitted as hearsay statements, though a few shopkeepers gave oral evidence) from proprietors of ladies' fashion shops around the country (Marlborough, Gosforth, Norwich, Woodstock, Cardiff, Worcester and so on).

9

Medici does not make a big thing of the "Animale" range. They do not advertise it (although they do advertise their own products in, for example, "Harpers Bazaar" and "You and Your Wedding"). They no longer advertise in "Vogue" because they think their target market is rather older than "Vogue" readers. Essentially Medici offers "Animale" as an additional product to its existing range.

EVENTS LEADING TO THIS CASE

10

Medici first sold "Animale" products in the spring/summer season 1999. This led to some conflict with "Animal" as a result of which a hurried decision was made to rebrand the product for the autumn/winter 1999 season as "Medici Casual". At some point later, use of "Animale" started again and has continued since. Whilst this was going on Mr Ruc launched an attack on the trade mark registration in the Trade Mark Registry essentially based upon allegations of descriptiveness or deceptiveness. It is hardly surprising that these failed. When the claimants discovered "Animale" clothing on sale in the United Kingdom in May 2001 these proceedings followed.

PARTIAL REVOCATION FOR NON-USE

11

The key battle lies over the registration for "clothing" and also "T-shirts". The parties agreed that logically the question of partial revocation came first since one cannot judge the question of infringement without knowing what the specification of goods is. I point out here that only infringement under s. 10(2) of the Trade Marks Act 1994 (=Art. 5. 1(b) of Directive 89/104) is now relied upon. Originally there was an allegation based upon s. 10(1) (= Art. 5.1(a)). This was, in my judgment rightly, abandoned. It depended on proof that "Animale" is identical with "Animal". The two words are self-evidently not identical, having different pronunciation however pronounced. Moreover, "Animale" is a foreign word in some languages and the word has a slight foreign "feel". This is not a case which can be regarded as taking the mark and merely making an addition – the addition makes a difference to the mark itself.

12

The relevant provision for revocation for non-use after the mark has been on the register for more than 5 years (as here) is s.46(1)(b) (= Art. 10(1)). It reads:

"The registration of a trade mark may be revoked on any of the following grounds – (b) that such use [i.e. genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or service with which it is registered] has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use."

It is common ground that the relevant period here is from 1st April 1997 until 1st April 2002.

13

Mr Mellon, for the defendants, accepts there has been use of "Animal" for some goods falling within some of the specifications in the different classes. But, he says, the kinds of goods for which use has been proved is too narrow for the specifications of goods to be maintained in their full width.

14

Mr Roberts, for the claimants, accepts that there should be partial revocation in some, non-crucial, respects. The battle falls into two halves – that which really matters and that which does not. That which matters is the Class 25 specification. This consists of "clothing, footwear, headgear, baseball caps, sweatshirts, T-shirts". If maintained in its full width then, following the provisions of s. 10(2)...

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