Julius Samaan Ltd v Tetrosyl Ltd

JurisdictionEngland & Wales
CourtChancery Division
Judgment Date17 Mar 2006
Neutral Citation[2006] EWHC 529 (Ch)
Docket NumberCase No: HC 04 C03273

[2006] EWHC 529 (Ch)





The Honourable Mr Justice Kitchin

Case No: HC 04 C03273

(1) Julius Sämann Ltd
(2) Julius Sämann Ltd
(3) H Young (operations) Limited
Tetrosyl Limited

Mr Mark Platts-Mills QC and Ms Jessie Bowhill (instructed by Willoughby & Partners) for the Claimants

Mr Roger Wyand QC and Mr Simon Malynicz (instructed by Eversheds) for the Defendant

Hearing dates: 22–24 February, 27 February-1 March 2006

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.


Mr Justice Kitchin:



This is the trial of an action for trade mark infringement and passing off. There is a Part 20 claim for the revocation and declaration of invalidity of the trade marks in issue.


The first claimant is a company incorporated in Bermuda. The second claimant is a company incorporated in Switzerland. They are the proprietors, respectively, of the following trade marks:

a) United Kingdom trade mark number 833,966 ("966") registered in class 5 in respect of deodorants as of 1 May 1962;

b) Community trade mark number 91,991 ("991") registered in class 5 in respect of air fresheners as of 1 April 1996.

The third claimant ("Saxon") is the exclusive licensee or the exclusive sub-licensee under each of those trade marks.


Although they are slightly different, both registered marks comprise the outline of a stylised fir or pine tree on a base. Save where it is necessary to distinguish between them I will refer to them collectively as "the Tree" marks. They are depicted below:


The Tree marks were conceived in about 1952 by Julius Sämann, a Swiss Canadian businessman. Mr Sämann died in the late 1990s and the claimants derive title from him. As I will explain in more detail later in this judgment, the Tree marks (or variations of them) have been used continuously over very many years in relation to a range of air freshener products called the "Magic Tree" range. The major product in this range is an air freshener which has been made in the shape of the Tree marks. This product ("the Tree product") is made of cardboard which carries the scent which is used as the air freshener. The Tree product is often used and seen in motor cars and other vehicles, dangling from the rear view mirror.


The defendant ("Tetrosyl") was established in 1954 and makes a wide range of products, mainly for use in the car care sector. One of the brands under which it sells car care products is "CarPlan". In the autumn of 2003, Tetrosyl began to market an air freshener for cars and other vehicles in the shape of a fir tree, decked out festively with snow and with flashing lights that can be switched on and off ("the Christmas Tree product"). It bears the brand CarPlan on its base and is sold in a box which has an illustration of the product on the outside. It has primarily been sold in a counter display unit ("CDU") placed on a retailer's counter, with an example of the product (not in its box) attached to the CDU. It has also been supplied on a "clip strip". The Christmas Tree product is depicted below, together with a sample Tree product:


The claimants contend that the sale of the Christmas Tree product amounts to an infringement of the Tree marks and passing off. Tetrosyl vigorously contests these allegations and, moreover, maintains that the Tree marks should be declared invalid and revoked.

The issues


The allegation of infringement is advanced on two bases:

i) First, the claimants contend there has been infringement of the 966 mark under s.10(2) of the Trade Marks Act 1994 ("the Act"), corresponding to Art.5(1)(b) of Council Directive 89/104 ("the Directive"), and of the 991 mark under Art.9(1)(b) of Council Regulation 40/94 ("the Regulation").

ii) Second, the claimants contend there has been infringement of the 966 mark under s.10(3) of the Act, corresponding to Art.5(2) of the Directive, and of the 991 mark under Art.9(1)(c) of the Regulation.


Tetrosyl disputes the allegations of infringement and argues that it has a defence under s.11(2)(b) of the Act, corresponding to Art.6(1)(b) of the Directive, and under Art.12(b) of the Regulation on the basis that the use of the Christmas tree constitutes the use of an indication concerning a quality of the product: it is a decoration shaped like a Christmas tree.


Tetrosyl also contends that the registrations should be declared invalid and ought to be revoked on the following grounds:

i) The Tree marks consist exclusively of the shape which gives substantial value to the goods (s.3(2)(c) of the Act, corresponding to Art.3(1)(e) of the Directive; Art. 7(1)(e)(iiof the Regulation);

ii) The Tree marks consist exclusively of indications which may serve to designate the kind, quality or other characteristics of the goods and there has been no sufficient use of the marks to render them distinctive (s.3(1)(c) of the Act, corresponding to Art. 3(1)(c) of the Directive; Art.7(1)(c) of the Regulation);

iii) In consequence of the acts or inactivity of the claimants, the Tree marks have become the common name in the trade for the products in respect of which they are registered (s.46(1)(c) of the Act, corresponding to Art.12(2)(a) of the Directive; Art.50(1)(b) of the Regulation).


Finally, the claimants contend that Tetrosyl has passed off the Christmas Tree products as and for, or as being connected with, the Tree products of the claimants.


Magic Tree


The Tree product has been sold in the United Kingdom since the early 1950s. Saxon has been responsible for distribution since 1991, when it took over from a company called Franklin Distribution Limited. Over the years other products have been introduced to make up the Magic Tree range.


Saxon distributes Magic Tree products to wholesalers and large retailers who in turn distribute them through multiple outlets. Saxon also sells directly to independent retailers. The wholesalers to whom Saxon supplies include Maccess, Brown Brothers and Convenience Distribution Group. Typically these wholesalers supply the product on to outlets such as petrol forecourt shops across the country. The large retailers to whom Saxon supplies directly include such well known names as Halfords, Asda, Wilkinsons and Tesco. Finally, Saxon also supplies to hundreds of independent retailers spread all over the country.

The Tree product


As I have indicated, the Tree product is a carded air freshener having the shape of the Tree marks. It is generally approximately 12 cm by 7 cm, although a larger, extra strength, Tree product is also made. Saxon regards Tree products as falling into two categories. The first is identified by fragrance, such as "Spice", "Vanilla", "Peachy Peach" and "Pot Pourri". The second is identified by visual appeal, such as "Rainbow Rush", various flag designs and "Black Ice". As Saxon emphasises, the shape of the Tree product remains the same no matter what fragrance, colour or pattern it bears.


The markings on the Tree products vary. Some, such as Spice, bear no markings on their surface other than an ® and an artistic design which, in the case of Spice, appears to be berries and flowers against an orange background. Others, corresponding closely to the 966 Tree mark, carry the words "MAGIC TREE" in the band across the centre of the Tree product and some descriptive material identifying the nature of the fragrance in the band across the base. Yet others carry the words "CAR-FRESHNER" in the band across the centre. One of these is depicted at [5] above. There are over 40 different fragrances in the range. All these products are made in the United States and supplied to Saxon for packaging in the United Kingdom.


The Tree products are sold in a variety of different packs and displays. There is, however, a consistent theme. The packaging generally bears a representation of the 966 Tree mark with the words "MAGIC TREE" in the central panel and the words "MAKE INDOOR AIR OUTDOOR FRESH" in the base panel. It also bears a statement that "The Tree design and MAGIC TREE are registered trademarks of Julius Sämann Ltd" and that "Saxon Industries is the sole distributor of "MAGIC TREE" products in the U.K.". The Tree product is always visible through the packaging.


So, for example, products in the Pot Pourri collection are sold in packs which bear upon their front a roundel containing the words "MAGIC TREE", "Pot Pourri Collection" and "air freshener". The pack has a background pot pourri design. On the back of the pack the same roundel appears together with the statement of trade mark proprietorship to which I have referred. The back of the pack also bears a representation of the 966 mark with, in the central panel, the words "MAGIC TREE" and, in the panel across the base, the words "MAKE INDOOR AIR OUTDOOR FRESH".

Other products in the Magic Tree range


Since 2000 Saxon has distributed a vent mounted plastic air freshener called "Vent Clip". This is made in the shape of the Tree marks and is available in three different fragrances, each of which is represented by a different colour. The product itself bears no other marking. It is packaged in a blister pack which bears the mark Vent Clip and the 966 mark with the words "CAR-FRESHNER" in the band across the centre and the words "Little Tree" in the band across the base.


Since March 2003 Saxon has also distributed another vent mounted air freshener called "Jet Fresh". Again it comes in a variety of fragrances. The packaging bears the mark MAGIC TREE and the 991 mark. The mark is coloured green and bears no words across it.



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