Natural Instinct Ltd v Natures Menu Ltd
| Jurisdiction | England & Wales |
| Judge | Mr David Stone,David Stone |
| Judgment Date | 20 March 2020 |
| Neutral Citation | [2020] EWHC 617 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Date | 20 March 2020 |
| Docket Number | Case No: IP-2018-000096 |
[2020] EWHC 617 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF
ENGLAND AND WALES
INTELLECTUAL PROPERTY (Ch)
INTELLECTUAL PROPERTY ENTERPRISE COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr David Stone
(Sitting as an Enterprise Judge)
Case No: IP-2018-000096
Mr Jonathan Moss (instructed by Irwin Mitchell LLP) for the Claimant
Mr Michael Hicks (instructed by Bristows LLP) for the Defendant
Hearing dates: 13 and 14 February 2020
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.
(Sitting as an Enterprise Judge)
David Stone (sitting as an Enterprise Judge):
There are in the United Kingdom more than 10.9 million pet cats and more than 9.9 million pet dogs. Between them, they annually consume £2.54 billion in pet food. This case is about two competitors in the pet food market.
By its amended claim form filed on 11 June 2018, Natural Instinct Limited (“the Claimant”) sued Natures Menu Limited (“the Defendant”) for trade mark infringement and passing off. The Claimant is the registered proprietor of the following United Kingdom trade mark numbered 2626609, known as a series mark, registered for “foodstuffs for dogs and cats” in class 31 of the Nice Classification (“the Trade Mark”). The first mark in the series is registered in monochrome – the second mark is registered in colour. No issue arises in this case due to its being a series mark:
Trade mark infringement was alleged under sections 10(2) and 10(3) of the Trade Marks Act 1994 (“the Act”). The Claimant also alleged that the Defendant has engaged in unlawful passing off.
At the trial, Mr Jonathan Moss appeared for the Claimant and Mr Michael Hicks appeared for the Defendant.
List of Issues
The Case Management Conference was dispensed with and on 1 April 2019 HHJ Hacon ordered by consent the following list of issues for the purposes of the trial:
(1) Has the Trade Mark acquired a high level of distinctiveness and reputation for the purposes of sections 10(2) and 10(3) of the Act?
(2) Has the Claimant acquired goodwill under:
(i) the name “Natural Instinct”; and
(ii) the Trade Mark?
(3) Is the sign used by the Defendant in the course of trade ‘Natures Menu TRUE INSTINCT’ or ‘TRUE INSTINCT’?
(4) By the time of the launch of the Defendant's TRUE INSTINCT range, was the Defendant's “Natures Menu” name well-known to members of the relevant trade and the public as a leading specialist supplier of raw dog food?
(5) Is the sign used by the Defendant similar to the Trade Mark?
(6) Does the Defendant's sign infringe the Trade Mark under section 10(2) of the Act?
(7) Does the Defendant's sign infringe the Trade Mark under section 10(3) of the Act?
(8) Is the presumption of validity under Article 127 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark applicable in respect of EUTM 012786547?
(9) Can the validity of EUTM 012786547 be put into dispute in the context of these proceedings?
(10) Is a European Union trade mark “another registered trade mark” in accordance with section 11(1) of the Act?
(11) If the answer to (10) above is no, should the infringement provisions of the Act be interpreted and applied so as to give effect to the provisions of Article 18 of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks?
(12) Do the Defendant's acts amount to passing off?
By the end of the trial, issues (3), (4), (5), (8), (9), (10) and (11) no longer fell to be decided. I am grateful to the parties and those instructing them for narrowing the issues for determination.
There were no disagreements between the parties on the relevant law to be applied: counsel for both parties agreed that this is a case that turns entirely on its facts.
The parties were also agreed that nothing turned on the difference between dog food and cat food – both parties sell both (albeit in different quantities) and the Trade Mark is registered for both. I therefore do not draw any distinction between the two.
Background
The factual background is largely agreed, and can be briefly stated. The Claimant manufactures and sells raw pet food. Raw pet food is only part of the pet food market – and a comparatively small part at that. Significantly larger parts of the pet food market are occupied by dry food (such as kibble (which is extruded), flaked foods, biscuits (which are baked) and freeze-dried food) and wet food (which is cooked food with a high moisture content, usually sold in cans, foil trays or pouches). The Claimant's raw pet food is sold frozen in plastic tubs under the brand NATURAL INSTINCT, which is also the name of the company. The Claimant also sells a small number of dried “treats” (such as liver treats and chicken hearts) as well as raw “treats” (such as chicken carcasses and bones). Approximately 80% of the Claimant's business is dog food, and 20% is cat food.
The Claimant has had some success with its NATURAL INSTINCT brand. Having launched only ten years ago, the Claimant's turnover was nearly £10 million per annum by the end of 2017. It has sold more than 19 million units of its products. An example of the Claimant's packaging is shown here:
The Defendant is also a pet food manufacturer and seller, with a range of products which it sells under various brands, including its house brand, NATURES MENU. It has traded under the NATURES MENU brand for approximately 20 years, and is a major and long-standing player in the market. In September 2017, the Defendant launched its TRUE INSTINCT brand of pet food, which includes raw food, but also dry food and wet food. Sales to consumers of TRUE INSTINCT branded pet food began in January 2018. The Defendant's packaging initially used TRUE INSTINCT together with the house brand NATURES MENU and a roundel device, shown here:
This sign was and is used on packaging as shown here:
Recently, the Defendant dropped use of NATURES MENU on the pack (except for in very small font on the base of the pack), and used TRUE INSTINCT on its own, shown here:
The Claimant first wrote to the Defendant on 3 November 2017. It submitted that what it described as evidence of confusion started coming to its attention almost immediately after the first sales of the TRUE INSTINCT product to consumers, that is, from March 2018. Since then, the Claimant has collated over 35 instances of what it says are examples of consumers being confused.
Further, the Claimant alleged that the Defendant had commissioned and received on 25 July 2017 a study from IPSOS called “new opportunities in the raw food market” (“the IPSOS Report”), which cited the Claimant and its NATURAL INSTINCT range as the most well-known and most frequently purchased competitor to the Defendant in the raw pet food market. The Claimant submitted that the IPSOS Report was the impetus for the Defendant adopting the name TRUE INSTINCT for its new range of raw pet food. The Defendant denied that allegation.
Witnesses
The Claimant provided witness statements from the following current and former members of its staff:
(a) Lucy Walker, until April 2019 the Claimant's Customer Support Manager;
(b) Emma Cooper, until August 2019 the Claimant's Marketing Assistant;
(c) Emma Brown, previously the Claimant's Customer Support Manager;
(d) Amy Maisey, the Claimant's Customer and Sales Support Manager;
(e) Rebecca Allison, the Claimant's Relationship Manager;
(f) Hannah-Lucy Baker, until February 2020 a member of the Claimant's Customer Support Team; and
(g) Joanna Taylor, the Claimant's Wholesale Supervisor.
Each of the seven witnesses gave evidence of what were said to be instances of confusion. Each was cross-examined. No criticism was made by counsel for the Defendant of the way in which these witnesses gave their evidence, and I agree. All came to court (in some cases on behalf of a previous employer) to assist, and each gave her evidence clearly and cogently. There were criticisms of what that evidence proved (I return to that below), but no criticism of these witnesses.
Additionally, the Claimant relied on the evidence of its Administration Manager, Sara Kinge, who provided two witness statements. Ms Kinge gave evidence as to the operations of the Claimant, as well as reporting four further instances of what were said to be examples of confusion. Although Ms Kinge was skilfully cross-examined, in the end, no strong criticism was made of her evidence, and I accept it. As with any witness, there were boundaries to Ms Kinge's knowledge, and her administrative role meant she was unable to answer some questions asked of her about the wider pet food market in the United Kingdom, but I do not consider that she can be criticised for that. She was an honest witness.
The Defendant relied on two witnesses. Julia Guy is the Defendant's Digital Channels Director. She provided a witness statement dated 15 November 2019 which reviewed web searches that had been undertaken which she said showed that the Claimant had been bidding on the search term “true instinct” on the Google Ads program. Following evidence from Ms Kinge in her second witness statement that the Claimant had never bid on “true instinct” as a search term, Ms Guy retracted that aspect of her first statement in a second witness statement dated 10 February 2020, shortly before the trial began. She was cross-examined. Whilst the Claimant submitted that her evidence was irrelevant, no criticism was made of the way in which it was given.
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