Premier Luggage and Bags Ltd v Premier Company (UK) Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Sir Anthony Evans,Sir Denis Henry,Lord Justice Chadwick |
| Judgment Date | 26 March 2002 |
| Neutral Citation | [2002] EWCA Civ 387 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: 2000/2770 |
| Date | 26 March 2002 |
[2002] EWCA Civ 387
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
(Mr Terence Etherton QC)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Chadwick
Sir Anthony Evans and
Sir Denis Henry
Case No: 2000/2770
Mr D Micklethwait and Mr S Malynicz (instructed by Messrs Nigel Adams & Co, London) for the Claimant/ Respondent
Mr J Baldwin QC and Mr J Abrahams (instructed by Messrs Lawrence Graham, London) for the Defendants/Appellants
This is an appeal and cross-appeal from an order made on 12 July 2000 by Mr Terence Etherton QC sitting as a Deputy Judge of the High Court in the Chancery Division in passing-off and trade mark infringement proceedings brought by Premier Luggage and Bags Limited ("Premier Luggage") against The Premier Company (UK) Limited ("Premier UK") and Mr Vinod Mahtani, the managing director of Premier UK. The judge held that Premier Luggage had made out its claims against Premier UK, both in passing-off and for infringement, and granted restraining orders. Premier UK appeals from those orders with the permission of the judge The judge refused to hold that Mr Mahtani was liable as a joint tort-feasor and dismissed the claim against him. Premier Luggage appeals from that part of his order.
The underlying facts
Premier Luggage was formed or acquired in 1985 to carry on the business of supplier of luggage and travel goods formerly carried on by Mr David Wieder under the trading name "Premier Supplies". The company imports luggage and travel goods from the Far East for sale to wholesalers, and to market traders and other small independent retailers, in the United Kingdom. Between 1990 and 1998 it sold goods having an aggregate wholesale value of £15 million or thereabouts. It has an annual turnover of about £2 million, at wholesale values. The company has, from the commencement of its trading in 1985, used "Premier" as a brand name; in the sense that that name appears on most of the products which it supplies. As the judge found: "Depending on the product in question, the word appears variously on metal logos, PVC logo patches, swing tags, zip pullers, and may be printed, embossed or embroidered on the product's material or lining". Premier Luggage is the proprietor of the registered trade mark No 2,123,966 "PREMIER" in respect of "suitcases, trolley cases, school bags, back packs, shopping bags, casuals, holdalls, light bags, sports bags, wallets, bum bags, kiddie bags and attaché cases" within Class 18. Registration of that mark under the Trade Marks Act 1994 took effect from the application date, 18 February 1997.
Premier UK was acquired by Mr Mahtani and others in April 1996. Before that date it had been a dormant subsidiary of Premier plc, a company owned or controlled by Mr Mahtani's family. The Mahtani family have carried on business in the United Kingdom since the mid-1980's through another subsidiary of Premier plc, Premier Decorations Limited ("Premier Decorations"). Premier Decorations imports and distributes Christmas decorations, Halloween costumes and accessories and garden tools and barbecues under the brand name "Premier". It does so through sales to major national retailers – amongst which are such household names as Homebase Limited, Safeway Stores Plc, CWS Limited, Focus Do It All Limited and Asda. Premier Decorations has a substantial business, with approximately 4,500 product lines and an annual turnover which had increased from £8 million in 1994 to £18 million in 1999.
Mr Mahtani's purpose, in acquiring Premier UK, was to use that company as a vehicle for the importation of luggage and travel goods for sale to the national retailers who were existing customers of Premier Decorations; so taking advantage (with its consent) of the established connections and reputation of the family company. To that end Premier plc obtained registration of the trade mark "pcl" under the 1994 Act, in respect of luggage, bags, travel bags, suitcases and belts within Class 18. Registration took effect from 14 November 1996. Premier UK began to trade at the end of 1996, using the mark pcl under licence from Premier plc. Management services and administrative support – including the booking and processing of orders, credit control, accountancy and warehousing—are provided to Premier UK by Premier Decorations under a management agreement. Premier Decorations also provides office, showroom and storage space at its premises at Premier House, in Ruislip. It is accepted that the luggage and travel goods business of Premier UK was built up through the relationship between Premier Decorations sales staff and their contacts in the retail sector; and that – in that context – the salesman would be likely to introduce himself as "from Premier", that being the name by which Premier Decorations was known to its customers.
The judge found that orders for luggage began to be received by Premier Decorations on behalf of Premier UK in November or December 1996. The first price list in respect of goods supplied by Premier UK is dated December 1996. Many of the Premier UK products were and are similar in style to the products of Premier Luggage. Premier UK products have always carried a pcl logo; as have its brochures and stationery (other than its initial letter paper). The swing tags on its products (other than those printed in error since 1999), as well as its brochures and its stationery, have also carried the full name "The Premier Company (UK) Limited".
The entry of Premier UK into the luggage trade came to the attention of Mr Wieder and Premier Luggage at a trade fair in February 1997. Mr Wieder instructed trade mark agents. On 13 February 1997 those agents wrote to Premier UK. The letter contained the following assertions:
"Your recent commencement of sales of luggage and leather goods has already caused several individual cases of confusion details of which have been noted by our clients. Whilst we understand that you do not label the goods you sell with the word 'PREMIER' but instead use the trade mark 'P.C.L' it is clear that confusion has occurred and is likely to occur in the future….
We consider your entry into the market in luggage and baggage to be an attempt to pass off your goods [as] those of our clients and we require that within fourteen days of the date of this letter you confirm in writing that you will immediately cease trading in luggage under the name The Premier Trading Company (UK) Limited or indeed any other name including the word PREMIER."
The trade mark application
Shortly thereafter, on 18 February 1997, Premier Luggage applied for registration of PREMIER as a trade mark under the 1994 Act. The application was supported by a statutory declaration, made by Mr Wieder on 13 August 1997. That statutory declaration contains the assertion that the trade mark PREMIER is distinctive of the goods sold by Premier Luggage in respect of which the application for registration was made and "is very well known in the trade as identifying the goods sold by my company". In the Trade Marks Journal (No 6207) the application was noted as "Proceeding because of distinctiveness acquired through use and trade evidence". The application was successful; and a registration certificate was issued on 24 April 1998.
These proceedings
The issue of a registration certificate was followed, shortly thereafter, by a letter dated 19 May 1998 from solicitors instructed by Premier Luggage asserting trade mark infringement. That letter contained the assertion that the use by Premier UK of the Premier name leads to "the inevitable conclusion that such use is no more than a cynical attempt to use our client's established Mark as a spring board into this previously untested market"; and the further assertion that "Given the difference in quality between the materials used by your company and our client to produce their respective goods, our client's reputation is bound to suffer". The letter called for undertakings, for delivery up of all swing tickets, catalogues and promotional literature which infringed the mark, and for a full list of customers by 26 May 1998; without which proceedings would ensue. It was thought appropriate in that letter to warn Mr Mahtani, as managing director of Premier UK, of the criminal penalties (including imprisonment) that might follow conviction for an offence under section 92 of the Trade Marks Act 1994.
These proceedings were commenced in September 1998. The primary claim was to restrain Premier UK and Mr Mahtani from passing off goods or a business (not being the goods or business of the claimant) as and for the claimant's goods or business by the use in relation thereto of the name The Premier Company (UK) Limited or any other name including the word "Premier"; and from infringing the PREMIER mark. As pleaded, the two claims are closely linked. It is said, in paragraph 8 of the statement of claim, that the defendant's use of its company name in such a manner as to amount to passing off is not in accordance with honest practices in commercial matters and is accordingly an infringement of the plaintiff's trade mark. The defence, served in November 1998, denied both passing-off and infringement of the trade mark. In particular it was denied that the word "Premier", used as part of the name of Premier UK, was reasonably capable of being construed either by members of the trade or the public as a material indication of trade origin or business connection. By counterclaim, added by amendment...
To continue reading
Request your trial
-
Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others
...name, there could be an own name defence in almost every case if Mr Bloch were right. In my judgment he is not.” 132 In Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387, [2003] FSR 5 claims were made in respect of alleged infringements of the trade mark PREMIER registe......
-
Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others
...he is not.” 62 Chadwick LJ and Kay LJ agreed. 63 Six months later Chadwick LJ had to consider section 11(2)(a) again, in Premier Luggage & Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387. The claimant had a registered trade mark “Premier” in respect of many kinds of luggage and used tha......
-
Okotoks Limted (Formerly Spicerhaart Ltd) and Another v Fine & Country Ltd and Others
...of the regulation and section 72 of the Act; British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, 302 and Premier Luggage and Bags Ltd v Premier Co (UK) Ltd [2002] EWCA Civ 387 [2002] ETMR 69 at [52]). But no one suggested that anything turned on the burden of proof in this 33 ......
-
Evegate Publishing Ltd v Newsquest Media (Southern) Ltd
...of the articles to be sold or the services to be rendered." 53 Mr Baldwin on behalf of Newsquest also referred me to Premier Bags & Luggage Ltd v. Premier Co (UK) Ltd [2003] FSR 5 at [37], in which Chadwick LJ stated as follows: "It is essential to keep in mind that, as Millett L.J. put it......