Supreme Petfoods Ltd v Henry Bell & Company (Grantham) Ltd

JurisdictionEngland & Wales
CourtChancery Division
JudgeThe Hon Mr Justice Arnold,Mr Justice Arnold
Judgment Date12 Feb 2015
Neutral Citation[2015] EWHC 256 (Ch)
Docket NumberCase No: HC13B00697

[2015] EWHC 256 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Rolls Building

Fetter Lane, London, EC4A 1NLL

Before:

The Hon Mr Justice Arnold

Case No: HC13B00697

Between:
Supreme Petfoods Limited
Claimant
and
Henry Bell & Co (Grantham) Limited
Defendant

Geoffrey Pritchard (instructed by Edwin Coe LLP) for the Claimant

Jessie Bowhill (instructed by Blandy & Blandy LLP) for the Defendant

Hearing dates: 27–30 January, 2 February 2015

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 Marks

2

The sign complained of

3

The witnesses

4–11

Supreme Petfoods witnesses

4–8

Henry Bell's witnesses

9–11

Factual background

12–43

Supreme Petfoods

12–24

Henry Bell and its predecessors

25–42

Third party use of the word SUPREME

43

Key legislative provisions

44–47

The relevance of TRIPS

48–49

The average consumer

50–55

The law

50

The average consumer in the present case

51–55

Validity of the Trade Marks

56–76

The law

56–59

Article 3(1)(b) of the Directive/Article 7(1)(b) of the Regulation

56

Article 3(1)(c) of the Directive/Article 7(1)(c) of the Regulation

57–58

Acquired distinctive character

59

Assessment

60–76

Inherent distinctive character of the UK Word Mark

60

Inherent distinctive character of the UK and Community Stylised Word Marks

61

Inherent distinctive character of the UK and Community Ribbon Marks

62

Acquired distinctive character of the UK Word Mark

63–75

Acquired distinctive character of the UK and Community Stylised Word Marks

76

Contextual assessment of infringement claims

77

Date of assessment of infringement claims

78–82

The law

78

The relevant date in the present case

79–82

Infringement under Article 5(1)(a) of the Directive

83–181

The law

83–164

The six conditions

83–84

Condition (v)

85

Condition (vi)

86–88

The CJEU's case law from Hölterhoff to Bellure

89–106

The CJEU's case law with regard to exhaustion of trade marks

135–143

The CJEU's case law with regard to honest concurrent use

144–148

The CJEU's case law with regard to the territorial scope of injunctions

149–150

Academic commentary

151

The CJEU's case law with regard to keyword advertising

152–162

Conclusion

163–164

Assessment

165–183

Condition (v)

165

Condition (vi)

166–183

Infringement under Article 5(1)(b) of the Directive/ Article 9(1)(b) of the Regulation

184–186

The law

184

Assessment

185–186

Infringement under Article 5(2) of the Directive/Article 9(1)(c) of the Regulation

187–192

The law

187

Assessment

188–192

Reputation

188

Link

190

Detriment

191

Due cause

192

Defence under Article 6(1)(b) of the Directive/Article 12(b) of the regulation

193–206

The law

194

Assessment

195–206

Whether the defendant knew of the existence of the trade mark

196

Whether the defendant used the sign in reliance on competent legal advice

197

The nature of the use complained of

198

Whether the defendant knew that the trade

199

mark owner objected to the use of the sign Whether the defendant knew that there was a likelihood of confusion

200

Whether there has been actual confusion

201

Whether the trade mark has a reputation and if so whether the defendant knew that the reputation of the trade mark would be adversely affected

202

Whether the defendant's use of the sign interferes with the owner's ability to exploit the trade mark

203

Whether the defendant has a sufficient justification for using the sign complained of

204

The timing of the complaint from the trade mark owner

205

Conclusion

206

Passing off

207

Summary of conclusions

208

Introduction

1

In this case the Claimant ("Supreme Petfoods") seeks in essence to monopolise use of the word SUPREME as a trade mark for animal food. The Defendant ("Henry Bell") denies that Supreme Petfoods is entitled to such a monopoly, and in the alternative denies that it has invaded any monopoly to which Supreme Petfoods may be entitled. It ought to be possible for such a dispute to be resolved without great legal difficulty or expense. Such is the current state of European trade mark law, however, that instead it has thrown up a considerable number of legal and factual issues, although the number was reduced as a result of sensible concessions made by both sides during closing submissions. As a result, I fear that the costs will have been out of all proportion to what is at stake.

The Trade Marks

2

Supreme Petfoods is the registered proprietor of the following registered trade marks ("the Trade Marks"):

i) United Kingdom Registered Trade Mark No. 2345353 consisting of the word SUPREME registered as of 8 October 2003 in respect of ( inter alia) "foodstuffs for animals; chews; meat and chocolate based animal treats; animal biscuits; animal litter; bird seed; animal bedding; … rabbit food" in Class 31 ("the UK Word Mark").

ii) United Kingdom Registered Trade Mark No. 2454708 consisting of the stylised word shown below registered as of 5 May 2007 in respect of ( inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the UK Stylised Word Mark").

iii) United Kingdom Registered Trade Mark No. 2454707 consisting of the ribbon device shown below registered as of 5 May 2007 in respect of ( inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the UK Ribbon Mark").

iv) Community Trade Mark No. 5874921 consisting of the stylised word shown above registered as of 4 May 2007 in respect of ( inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the Community Stylised Word Mark").

v) Community Trade Mark No. 5875091 consisting of the ribbon device shown above registered as of 4 May 2007 in respect of ( inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the Community Ribbon Mark").

The sign complained of

3

Supreme Petfoods complains about Henry Bell's use of the word SUPREME as shown in the following illustrative example of Henry Bell's packaging.

The witnesses

Supreme Petfoods' witnesses

4

Christopher Childs (Managing Director), Robert Baker (Technical Director), Claire Hamblion (Marketing Manager) and Thomas Kier (Chairman and owner) of Supreme Petfoods gave evidence about Supreme Petfoods' business, products and marketing and its relationship with Henry Bell and its predecessors.

5

Debbie Kibble and Penny Newby (both UK Telesales Support) of Supreme Petfoods gave evidence about alleged customer confusion, as did three of their customers: Georgina Lees of Kings Health Pet Centre, Lisa Till of Dolittles Pet Superstore and Debbie Walsh of Tavistock Pet Emporium. Clayton Hollins of CJ's Portland Pets, Aquatics & Reptiles and Piers Smart of Scampers Pet Shop were unable to attend the trial and so Supreme Petfoods served hearsay notices in respect of their witness statements. Given that their evidence was not tested in cross-examination and given the evidence of the other witnesses whose evidence was subject to cross-examination, I am unable to give these two witnesses' evidence any weight in so far as it goes further than the evidence of the live witnesses.

6

Dr Georgina Grell, the editor of Vetinerary Nurse, and Rachel Todd, Chief Executive Officer of the Rabbit Welfare Association and Fund, gave evidence about rabbit nutrition. They and Robert Chapman of the London Vet Show also gave evidence about how Supreme Petfoods was referred to.

7

Nicholas Phillips of Supreme Petfoods' solicitors gave evidence about certain internet searches and both he and Mark Hickey of Supreme Petfoods' trade mark attorneys gave evidence about Supreme Petfoods' knowledge of Henry Bell's Community Trade Mark No. 3435484 (MR JOHNSON'S SUPREME).

8

Counsel for Henry Bell made certain criticisms of the evidence of some of Supreme Petfoods' witnesses. The most serious criticisms concerned Ms Hamblion and Ms Newby. In both cases, however, the criticisms mainly related to the witness' witness statements rather than their oral evidence. In my view both witnesses gave their oral evidence fairly, although I agree that their witness statements left a certain amount to be desired.

Henry Bell's witnesses

9

Thomas Lee (owner and Director) and Alan Gittins (Key Account Manager) of Henry Bell gave evidence about Henry Bell's business, products and marketing and its relationship with Supreme Petfoods.

10

Alan Bamford of R E Bamford Ltd, Nigel Bone of Bones SW Ltd, James Brewer of Fal Valley Pets, John Burgess of Pet Market (Pets First), Maria Rees of Winners Animal and Petfood and Michelle Turner of The Pet Warehouse gave evidence about how Supreme Petfoods' products were referred to and as to the absence of confusion.

11

Lucy Wiggins of Henry Bell's solicitors gave evidence about certain internet searches.

Factual background

Supreme Petfoods

12

Supreme Petfoods started to trade in the mid 1980s selling canned dog food. Subsequently it became the agent for Purina dog food. In 1990 Supreme Petfoods launched a muesli rabbit food under the name Russel Rabbit, which became its flagship product. The packaging looked like this:

I should make it clear that in this image the top of the...

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