Knoll International Ltd v Parker-Knoll Ltd

Many people in this country have heard of Parker-Knoll chairs. The name comes from a business association between an English firm and a German firm. An English family of the name of Parker had long established themselves at High Wycombe as furniture manufacturers: and a German family of the name of Knoll had established themselves at Stuttgart. In 1930 Wilhelm Knoll of Stuttgart claimed to have invented a new method of springing chairs. He introduced it to Frederick Parker & Sons Ltd. of High Wycombe and they agreed to develop it. They produced chairs with these special springs and called them Parker-Knoll chairs. In 1939 the agreement came to an end. But Frederick Parker & Sons Ltd. continued to manufacture furniture and sell it under the name of Parker-Knoll. In 1942 Parker-Knoll Ltd. was incorporated and took over the business. Henceforward I will call them "Parker-Knolls". They have used the name Parker-Knoll extensively. So much so that it has become distinctive of their goods. It means their goods to the exclusion of all others. It is indeed their registered trade mark. The combined name "Parker-Knoll" is registered as Trade Mark No. 569276.

Meanwhile Wilhelm Knoll continued to manufacture furniture in Stuttgart under his own name Willie Knoll. But he had a nephew Hans Knoll who went to America and set up a printing business there. In 1946 Hans Knoll married his talented wife Florence Knoll who herself became an expert designer of furniture. Together they formed Knoll International Ltd., a company incorporated in Delaware, U.S.A. This company is especially concerned with designing modern furniture and promoting its use on a worldwide scale. Henceforward I will call them "Knoll International". Hans Knoll died in 1955 but Florence Knoll has continued her close association with the business. Knoll International have expanded their activities into many countries and have established subsidiaries with the name of Knoll International in France, Germany, Italy, Canada and so forth.

Apart from the German family of Knoll, there is another use of the word "Knole" in connection with furniture. It is pronounced the same but spelt differently: "Knole" instead of "Knoll". When spelt Knole it has long been used to denote a well known type of settee derived from the old country house of that name in Kent. Many people in this country are familiar with this use of the word.

Parker-Knolls are interested in furniture of traditional design, principally made of wood, such as is common in ordinary homes. Knoll International are more interested in furniture of modern design, principally of metal, such as is more often seen in institutions. But there is naturally an area where their interests may overlap. Knoll International have for some little time been known here because they advertise in American journals which circulate in England. Their designs have been noticed in some of our papers and are known to architects, interior designers, and others who are particularly interested in furniture design. These specialists appreciate full well that Knoll International have no connection with Parker-Knolls.

The dispute arises in this way. In January, 1957, Knoll International approached Parker-Knolls with the proposal that the two of them should together form an English company to produce and sell the designs of Knoll International: but Parker-Knolls declined to co-operate in this proposal. In consequence Knoll International decided to introduce their products into England on their own. They came to an agreement with a firm in England called Meredews to manufacture furniture of their design and they set up a place of business at 6a Bedford Square, London. They use stationery and tickets marked with the words "Knoll International Limited, a Company incorporated in Delaware, U.S.A." They issue literature in which they use the words "Knoll International" in relation to their goods, and in some places they have abbreviated it to "Knoll". Thus they have a book of designs which they call the Knoll Index of Contemporary Design. Their pamphlets refer to Knoll furnishings and the like.

Parker-Knolls took strong exception to these activities by Knoll International. In order to prepare for battle, Parker-Knolls sought to register the simple word "Knoll" by itself as a trade-mark. And, unknown to Knoll International, they did in fact register it. They registered it as No. B.761,821.

At the start of the battle there were numerous skirmishes but now only three remain to be disposed of:

(1) Knoll International Ltd. applied to expunge the trade-mark "Knoll" which Parker-Knoll had registered.

(2) Parker-Knoll claimed an injunction to restrain Knoll International Ltd. from infringing the registered trade-mark "Parker-Knoll".

(3) Parker-Knoll claimed an injunction to restrain Knoll International Ltd. from passing off their goods as the goods of the plaintiffs.

At the trial before Russell, J. the parties agreed that those three matters stood or fell together (see 1961 R.P.C. p. 38). Russell, J. considered first the passing-off matter and having decided it in favour of Parker-Knolls, with little more ado, he decided the two trade-mark matters in their favour also. When the matter reached the Court of Appeal, however, it became plain that the three matters should be considered separately: and that is what was done by that Court. I would do the same, except that I would take the trade-mark matters before the passing-off, because to my mind it enables the issues to be more clearly appreciated.

I. The motion to expunge the trade-mark "Knoll".

Russell, J. granted to Parker-Knoll the exclusive right to use the word "Knoll". He affirmed their trade-mark "Knoll". But the Court of Appeal unanimously ordered it to be expunged and their decision on this point has not been challenged before your Lordships. The reasons are not far to seek. It was proved beyond question that Parker-Knolls had never used the word "Knoll" by itself. They always used the combined name "Parker-Knoll". They completely failed to establish that the word "Knoll" meant their goods. To specialists in the furniture trade, it meant (when spelt "Knoll") the goods of Knoll International. To many other people it meant (when spelt "Knole") a particular type of settee. It was not in fact capable of distinguishing the goods of Parker-Knolls from the goods of others. It did not qualify, therefore, for registration under section 10 (2) of the 1938 Act. The Court of Appeal accordingly ordered the Register to be rectified under section 32 by removing the mark "Knoll" therefrom.

This decision seems to me to be of much importance to the rest of the case. It shows that the name "Knoll" is not distinctive of the goods of Parker-Knolls: and they cannot obtain a monopoly to the use of it.

II.The claim for infringement of the trade-mark "Parker-Knoll".

By registering the trade-mark "Parker-Knoll" the plaintiffs have the exclusive right to the use of that word in respect of chairs, stools, settees, divans and beds: and under section 4 of the 1938 Act that right is to be deemed to be infringed by any person who uses, in relation to such goods, a mark "identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade �"

The words " or cause confusion" were new in 1938. They did not appear in any of the statutes previously in force. The phrase previously used was "so nearly resembling such a trade mark as to be calculated to deceive", see section 19 of the Trade Marks Act, 1905, and section 17 of the Companies Act, 1929. And the test of infringement was usually said to be simply whether the offending mark was "calculated to deceive", see Kerly on Trade Marks 5th Edn. p. 474.

It has been said that, notwithstanding the introduction of the words "or cause confusion", the language of section 4 (1) of the Trade Marks Act, 1938,...