Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)

JurisdictionEngland & Wales
CourtChancery Division
JudgeTHE HON MR JUSTICE ARNOLD,MR JUSTICE ARNOLD
Judgment Date22 Jul 2011
Neutral Citation[2011] EWHC 1879 (Ch)
Docket NumberCase No: HC09C02982

[2011] EWHC 1879 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

The Hon Mr Justice Arnold

Case No: HC09C02982

Between:
Samuel Smith Old Brewery (Tadcaster)
Claimant
and
Philip Lee (Trading as "cropton Brewery")
Defendant

Denise McFarland and Jeremy Heald (instructed by Travers Smith LLP) for the Claimant

Mark Engelman (instructed by Walker Morris) for the Defendant

Hearing dates: 4–6, 8, 11 July 2011

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.

THE HON MR JUSTICE ARNOLD MR JUSTICE ARNOLD

Contents

Topic

Paragraphs

Introduction

1

The Trade Mark

2–6

The labels in issue

7–10

The witnesses

11–18

Factual background

19–73

Samuel Smith

19–28

The Trade Mark

29–33

Cropton Brewery

34–36

Yorkshire Bitter

37–46

The Yorkshire Regiment

47–50

Yorkshire Warrior

51–66

Third party use of rose devices

67–73

The key provisions of the Directive

74–75

Infringement under Article 5 (1) (b)

76–106

The law

76–78

The present case

79–106

The average consumer

80

Identical goods

81

The distinctive character of the Trade Mark

82–87

What are the signs used by Cropton Brewery?

88–91

What are the dominant elements of the signs?

92

Visual, aural and conceptual similarities

93–94

No evidence of actual confusion

95–97

Evidence of likelihood of confusion

98–103

Overall conclusions

104–106

Infringement under Article 5 (2)

107–110

Defence under Article 6 (1) (b)

111–144

Indications concerning geographical origin

111

Use in accordance with honest practices in industrial or commercial matters: the law

112–120

The present case

121–144

Yorkshire Bitter

122–129

Yorkshire Warrior

130–144

Passing off

145–149

Goodwill

147

Misrepresentation

148

Damage

149

Cropton Brewery's counterclaim for threats

150–162

First letter

153–156

Second letter

157–161

Conclusion

162

Summary of conclusions

163

Postscript

164

Introduction

1

This is a case about Yorkshire pride, in more ways than one. The protagonists, Samuel Smith and Cropton Brewery, are two proud, small, independent Yorkshire breweries. There is no dispute about the quality of their respective beers. The casus belli is Samuel Smith's claim that Cropton Brewery has infringed Samuel Smith's registered trade mark for a stylised white rose device, and committed the tort of passing off, by use of labels incorporating two similar stylised white rose devices. For the uninitiated, a white rose is the traditional symbol of the county of Yorkshire, having been the emblem of the House of York during the Wars of the Roses. The dispute is one which ought to have been capable of settlement out of court a long time ago. Instead it has grown into a case which is out of all proportion to what is at stake in commercial terms. One explanation for this is Yorkshire pride; but I fear that the English legal system bears a measure of responsibility as well.

The Trade Mark

2

Samuel Smith is the registered proprietor of UK Registered Trade Mark No. 1,006,571 ("the Trade Mark") registered as of 14 February 1973 in respect of "beer" in Class 32. The Trade Mark consists of the following device:

3

It is common ground that the Trade Mark is registered in monochrome with no indication of colour. In practice, it is used by Samuel Smith exactly as registered except that the shaded portions are normally coloured dull gold or beige.

4

It is important to note at the outset there is no challenge to the validity of the Trade Mark. I shall discuss the significance of this below.

5

Samuel Smith is also the registered proprietor of UK Registered Trade Mark No. 2,005,780 registered as of 31 October 1994 in respect of "draught and bottled beer, all brewed in Yorkshire" in Class 32. This trade mark consists of the following device:

6

Although Samuel Smith pleaded this trade mark, counsel for Samuel Smith rightly did not rely on it at trial. It adds nothing to Samuel Smith's case, and I will say no more about it. On the other hand, it should be noted that this is one of a number of registered trade marks owned by Samuel Smith featuring the same style of label. The other trade marks differ only in the product mark or descriptor: instead of YORKSHIRE, they have NUT BROWN ALE, TADCASTER BITTER or XXXX BEST MILD.

The labels in issue

7

Samuel Smith complains about the labels used by Cropton Brewery in relation to two different beers. The first product is Yorkshire Bitter, a bottled beer brewed by Cropton Brewery exclusively for Marks & Spencer plc. I reproduce below a photograph of the label seen from the front of the bottle:

8

I reproduce below a photograph of the entire label laid flat:

9

The second product is Yorkshire Warrior, a beer brewed by Cropton Brewery for sale both on draught and in bottle. I reproduce below a photograph of the label seen from the front of the bottle:

10

I reproduce below a photograph of the entire label laid flat:

The witnesses

11

Samuel Smith called six factual witnesses. Clive Auton, who was employed by Samuel Smith in various capacities between 1964 and 2001, and Christian Horton, who has been employed by Samuel Smith since 1996 and has been marketing manager since 2001, gave evidence about Samuel Smith, its products and its use of the Trade Mark. Mr Horton also gave evidence about the present dispute and about third parties' use of rose devices. Christopher Coles, Graham Davidson, Shirley Hastings and Nicholas Taylor are respectively the managing director of an independent beer and cider retailer, two longstanding customers of Samuel Smith and a bar manager employed by Samuel Smith. They all gave evidence about their knowledge of the Trade Mark and their perception of the Cropton Brewery signs in issue.

12

Cropton Brewery called three factual witnesses. Philip Lee has been the proprietor of Cropton Brewery since 2001. Although he is a sole trader, I will refer to the business by its trading name. Lieutenant Colonel David O'Kelly has been Regimental Secretary to the Yorkshire Regiment since its formation in 2006. Michael Miles worked at The White Rose Hotel in Leeming Bar, Yorkshire from 2004–2011 and was manager from 2009–2011.

13

All of the factual witnesses were straightforward witnesses. In the case of Mr Lee, he was initially slightly reluctant to admit certain points put to him by counsel for Samuel Smith, but ultimately was frank in his admissions.

14

In addition to the factual witnesses, Samuel Smith called one expert witness, Tom Blackett. Mr Blackett is an expert in branding and marketing, having worked for the Interbrand Group for 25 years prior to retiring in 2008 and setting up as an independent consultant. Counsel for Cropton Brewery did not challenge Mr Blackett's expertise in branding and marketing, but submitted he had no particular expertise with regard to the brewing industry. I do not accept this. Mr Blackett testified that he had particular experience of the brewing industry, having worked for a number of major clients in that field.

15

More importantly, counsel for Cropton Brewery submitted that no weight should be given to Mr Blackett's evidence with regard to the likelihood of confusion, unfair advantage and detriment to the Trade Mark. In support of this submission, he relied on the comments of all three members of the Court of Appeal in esure Insurance Ltd v Direct Line Insurance plc [2008] EWCA Civ 842, [2008] RPC 34. Mr Blackett also gave evidence in that case. Arden LJ said [62]:

"Firstly, given that the critical issue of confusion of any kind is to be assessed from the viewpoint of the average consumer, it is difficult to see what is gained from the evidence of an expert as to his own opinion where the tribunal is in a position to form its own view. That is not to say that there may not be a role for an expert where the markets in question are ones with which judges are unfamiliar: see, for example, Taittinger SA v Allbev Ltd [1993] F.S.R. 641. However, the evidence of Mr Blackett on confusion was of no weight in this case: he merely gave evidence as to his own opinion about a market which would be familiar to judges. If more cogent evidence of customer perception is needed, the traditional method of consumer surveys must (subject to my second point) carry more weight and is to be preferred. Mr Mellor went so far as to suggest that expert evidence is inadmissible on the question of consumer perception. I do not consider that it is necessary to go quite that far because there are exceptional situations, but I note that in The European Ltd v The Economist Newspaper Ltd [1998] F.S.R. 283 at 290–291 Millett L.J., with whom Hobhouse and Otton L.JJ. agreed, considered that the evidence of trade witnesses who gave their opinion of the likelihood of confusion was 'almost entirely inadmissible'. He added: 'It is not legitimate to call such as witnesses merely in order to give their opinions whether the two signs are confusingly similar. They are experts in the market, not on confusing similarity.' The cogency of their evidence must in any event, save where expert knowledge of the particular market is required, be in real doubt. Its use may therefore lead to a sanction in costs. (Mr Mellor also made objections to the evidence of Mr Tildesley, but in the circumstances it is unnecessary for me to deal with these separate objections.) If the objection can be dealt with as one going to weight, this is often the course which the court takes: Re M & R (Minors) (Sexual abuse: expert evidence) [1996] 4 All E.R. 239."

16

Jacob LJ...

To continue reading

Request your trial
35 cases
  • Roger Maier and Another v Asos Plc and Another
    • United Kingdom
    • Chancery Division
    • 19 September 2013
    ...12(a). 148 The principles to be applied in considering 'honest practices' were considered by Arnold J in Samuel Smith Old Brewery v Lee [2012] FSR 7. He summarised those principles as follows (see paragraphs 114 onwards of his judgment): i) The requirement to act in accordance with honest ......
  • Hearst Holdings Inc. v AVELA Inc.
    • United Kingdom
    • Chancery Division
    • 25 February 2014
    ...(s11(2)(b)) and refer to the CJEU in Adidas AG v. Marca Mode CV [2008] ECR I-2439, paragraphs 44 to 47 and to Arnold J in Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch) at paragraphs 114–117. These passages were uncontroversial and I will not set them out. Validity of the ......
  • Stichting Bdo and Others v BDO Unibank, Inc. and Others
    • United Kingdom
    • Chancery Division
    • 4 March 2013
    ...practices proviso to the own name defence may mean that the defence is available as at some dates but not others: see Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch), [2012] FSR 7 at 96 Thirdly, Levi Strauss does not consider the position where the defendant has been usin......
  • Moroccanoil Isreal Ltd v Aldi Stores Ltd
    • United Kingdom
    • Intellectual Property Enterprise Court
    • 29 May 2014
    ...to the assessment of passing off and referred to Samuel Smith Old Brewery (Tadcaster) v Philip Lee (trading as Compton Brewery) [2011] EWHC 1879 (Ch): [2012] FSR 7. I think this submission goes too far. As Arnold J said in Samuel Smith (in the context of assessing the likelihood of confusi......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT