Neutrogena Corporation (A Delaware Corporation) and Another v Golden Ltd (T/a Garnier) and Another
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE MORRITT,LORD JUSTICE WARD,LORD JUSTICE KENNEDY |
| Judgment Date | 01 December 1995 |
| Judgment citation (vLex) | [1995] EWCA Civ J1201-2 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | CHANF 95/0812/B |
| Date | 01 December 1995 |
[1995] EWCA Civ J1201-2
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
(Mr Justice Jacobs)
Before: Lord Justice Kennedy Lord Justice Morritt Lord Justice Ward
CHANF 95/0812/B
MR G HOBBS QC with MR N SILVERLEAF (Instructed by Messrs Llewellyn Zietman, Finsbury) appeared on behalf of the Appellant
MR C FLOYD QC with MR G HAMER (Instructed by Messrs Ashurst Morris Crisp, London) appeared on behalf of the Respondent
Friday, 1 December 1995
By his order made on 19th May 1995 Jacob J restrained the defendants ("Garnier") from passing off their cosmetics or toiletries as and for the goods of the Plaintiffs by the use of the mark Neutralia or any colourable imitation of the trade mark Neutrogena or from infringing that mark. This is an appeal of Garnier from that order. Garnier contends that the judge adopted too low a test of the likelihood of deception or confusion required to establish liability for passing off or infringement of trade mark. Further Garnier contends that the evidence before the judge was not adequate to establish sufficient deception or confusion caused by their use of the mark Neutralia.
The name Neutrogena was coined in the 1940s for use in connection with a new formulation for soap invented by Dr Louis Fromont. The soap was unperfumed because perfume is an irritant and was described as hypo-allergenic because it has a very low tendency to cause allergic reaction. Neutrogena soap was first sold in the United States of America in the mid-1950s and in the United Kingdom in 1958. In the course of time the range of products sold under the name Neutrogena expanded to include, in addition to a range of soaps, shower gel, shampoos, lip salve, hand cream, and other skin-care products. All these products have the same hypo-allergenic properties, many are transparent and for the most part uncoloured.
Sales of Neutrogena products have increased from £1.7m in 1987 to £7m in 1992. Over the same period the sums spent on advertising them have gone up from £6,500 in 1987 to £2.6m in 1992. It is not disputed that the Plaintiffs have a very substantial reputation and goodwill in the United Kingdom in respect of haircare and skincare products sold under the name of Neutrogena. Further they are the registered proprietors of the mark Neutrogena in respect of "soaps" (No:707,281), "cleaning preparations and soap" (No:1,089,435) and "non-medicated toilet preparations; non-medicated preparations for the care of the skin; shampoos; essential oils; dentifrices; preparations for the hair; anti-perspirants; deodorants for personal use" (No:1,248,530). It is not alleged that any of these registrations is invalid.
Garnier are ultimately subsidiaries of the large French group L'Oréal and trade under the name of "Laboratoires Garnier". They too are engaged in selling personal care products for persons with sensitive skin. So far as the United Kingdom is concerned until recently their products were sold under various names such as "Ambre Solaire", "Belle Color" and "Synergie".
The name Neutralia was coined in 1984 by M.Mayer, then in charge of the interests of Garnier in 10 European countries. The name was arrived at by joining the prefix "Neutra", intended to signify neutrality, with part of the name "Equalia" which had been used in respect of some Garnier brands sold outside the United Kingdom. It was intended for use in connection with products suitable for those with delicate scalps and other products for which hypo-allergenicity was required. I should make it plain that the judge accepted the evidence of M.Mayer that although he knew of Neutrogena he did not envisage any confusion between the two brand names and that Garnier did not adopt the name Neutralia with a view to deceiving anyone.
In early 1990 Garnier launched in East Anglia a personal care product under the name Neutralia by way of testing the market. The test was not a success and the product was withdrawn. Thereafter the name was used in connection with similar products in France in 1992, Italy and Belgium in 1993 and 7 other European countries in 1994. In August 1993 Garnier prepared for the launch in the United Kingdom, which took place in March 1994, of a range of cosmetic and toiletry products to be sold under the name Neutralia. The preparations came to the notice of the Plaintiffs who issued the writ in this action on 27th January 1994. An application by the Plaintiffs for an interlocutory injunction was refused by Ferris J on 28th February 1994.
The products sold in the United Kingdom by Garnier under the name Neutralia include a shampoo, facial wash, shower gel, bath foam, moisturiser, and liquid soap. This range is somewhat narrower than that of the Plaintiffs. The Neutralia products are transparent and are sold in clear transparent bottles with a light blue cap or dispenser. The name Neutralia is prominently shown in white on a blue background with the words "Laboratoires Garnier" in blue with the latter being larger than the former.
The launch of the Neutralia products was accompanied by an advertising campaign well in excess of anything done for Neutrogena. There was substantial magazine and television advertising and the distribution of free samples to 10% of the households in the country. The advertising used the name Laboratoires Garnier to indicate the source of Neutralia. The amount so spent up to March 1995 was about £5.7m. In its first year Neutralia achieved 8.6m unit sales and captured 2.7% of the market. The sales of Neutralia products were by April 1995 greater than those of Neutrogena.
The action was heard by Jacob J over six days in April and May 1995. The evidence adduced by the Plaintiffs relating to confusion and, mostly, specifically referred to by Jacob J in his judgment came from six categories of witness, namely:
(1) Complainants concerning the television advertising of Garnier's shower gel;
(2) Customers who communicated with the Plaintiffs;
(3) Customers who communicated with Garnier;
(4) Personnel from the Plaintiff's solicitors and their acquaintances;
(5) Respondents to special offer schemes mounted by Neutrogena;
(6) Interviewers involved in such schemes.
In addition there was evidence from trade witnesses, individual consumers called by Garnier, trade mark agents and a statistician, Professor Ehrenberg.
Jacob J handed down his reserved judgment on 19th May 1995. He made a number of findings of fact which are not challenged. In relation to the Plaintiff's reputation in the name Neutrogena he concluded that though it was admittedly substantial it was not so great that a few people could not be deceived by a variant. He found that Neutrogena is often, perhaps more often than is the case with other similar products, recommended by word of mouth. He considered that substantial numbers of the Plaintiff's customers were only occasional users of the Plaintiffs products, which were fairly expensive and therefore slow-moving, and were unaware of both the full range of those products or the identity of the maker of them.
In relation to the products of Garnier sold under the name of Neutralia he considered that they were aimed at the same market, namely that described in evidence as the "hypo-allergenicity market" or the "dermo-protection" market. He thought that the product was excellent so that customers were unlikely to complain on that score. He considered that many consumers did not notice the name of Garnier on the clear bottles and that the differences in packaging and the use of the Garnier name were not adequate to avoid confusion with the Neutrogena products.
The judge's approach to the resolution of the dispute before him is clear from his judgment. First, he set out the legal test to be applied in the following passage at page 4 line 33 to page 5 line 10
"There is no dispute as to the applicable law. The question is whether the mark Neutralia (used for shampoos and skincare products) so nearly resembles the mark Neutrogena as to be likely to deceive or cause confusion. … There is in this case no real difference between deception and confusion —if people think Neutralia is connected with the Neutrogena people, or mistake one for the other, or in other ways mix one with another that is enough. Another way of putting the question is to ask whether the goodwill of Neutrogena is damaged by any form of misrepresentation caused by Neutralia.
It is, of course, the effect on the goodwill of Neutrogena which matters. It is not a defence to passing off that many of a defendant's sales do not cause deception or confusion. There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By "enough" I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill. In this case (where most of these are probably not confused) the crucial question is whether or not the plaintiffs have established a sufficient degree of confusion and deception to take the case above a de minimis level. For there are always some people who are confused and even when products and names are well-differentiated, mistakes do occur."
Second, he described the proper approach of the court to the application of that test to the evidence. At page 5 line 20 to line 33 he said
"The proper approach of the court to the question was...
To continue reading
Request your trial
-
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation
... ... of a single trade mark or, put another way, a registration of a single trade mark which ... of Jacob J (as he then was) in Neutrogena Corporation v Golden Limited [1996] RPC 473 ... ...