W.s. Foster & Son Ltd v Brooks Brothers Uk Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Recorder Iain Purvis QC |
| Judgment Date | 21 March 2013 |
| Neutral Citation | [2013] EWPCC 18 |
| Docket Number | Case No: CC12P00987 |
| Court | Patents County Court |
| Date | 21 March 2013 |
[2013] EWPCC 18
Recorder Iain Purvis QC
(sitting as a Deputy Judge of the Patents County Court)
Case No: CC12P00987
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr Tom Alkin (instructed by Jensens for the Claimant W.S. Foster & Sons Limited
Mr Christopher Aikens (instructed by Ipulse) for the Defendant Brooks Brothers UK Limited
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.
Introduction
1. This is the trial of an action for passing off concerning what has been referred to in these proceedings as ‘the fox and boot device’. A representation of that device is set out below:
2. I have shown the fox and boot device in the manner most commonly used today by the Claimant. It should be pointed out for complete accuracy that the precise representation of that device by the Claimant has not been perfectly consistent over the years and is indeed not perfectly consistent today. Small variations in the appearance of both the boot and the fox can be seen in some of the advertising materials in the evidence, and can still be seen between different examples of products presently on sale. However, nothing turns on this.
3. The Claimant, W.S. Foster & Son Limited, is a long established shoe and bootmaker, with premises in Jermyn Street. The business dates back to the 1840s. The Claimant is well known amongst those who purchase custom-made (or ‘bespoke’) shoes for the skill of its craftsmen, and such shoes sell for up to £3,000 a pair. However, it also has other aspects to its business, selling ready-to-wear shoes and other leather products such as cases, luggage and wallets.
4. The Defendant is an ultimate subsidiary of Brooks Brothers Group, Inc., the parent company of the well-known menswear group which started business from Madison Avenue, New York, and has since expanded across the United States and across the world. It also sells shoes of the ready-to-wear variety. The Defendant itself was incorporated only in 2005, and started to trade from two new stores in London in 2005 and 2006. It has since opened another store in Edinburgh. Various Brooks Brothers companies have come into existence at different times in the long period covered by the evidence in this case, but it is not entirely clear which company did what at any particular time. In this judgment I will use the term ‘Brooks Brothers’ generically to refer to the various companies in the group.
5. The Claimant was represented at trial by Mr Tom Alkin and the Defendant by Mr Christopher Aikens.
History of the fox and boot device
6. Some background on the history of the fox and boot device is necessary before considering the pleaded cause of action in this case. Most of it comes from the evidence of Mr Terry Moore, who gave evidence for the Claimant, and Mr Raymond Jones, who gave evidence for the Defendant. Both were able to speak of events (though from different perspectives) from about 1950.
7. The device was originally conceived and used by a shoe maker called Bartley & Son, probably dating back to the 19 th century. In 1952, when the last Mr Bartley chose to retire, the business and equipment of his firm was acquired by a large and well-known shoe maker called Peal & Co (‘Peals’). Peals were based in Oxford Street (and later Wigmore Street) but had manufacturing premises in Acton. They were bootmakers by appointment to various members of the royal family and created bespoke shoes for many notable celebrities of the last century including Winston Churchill, Lord Mountbatten and Fred Astaire. Peals had been run by successive generations of the Peal family since 1791.
8. Having acquired the business of Bartley & Son, Peals adopted the fox and boot device for its own business, branding its shoes and other goods with the device. Given the size and significance of Peals in shoe making at the time, it is clear that by 1965 the device was well-known as its trade mark. Peals seem to have used the trade mark in the following way:
9. Peals made both bespoke and ready-to-wear shoes, but the bespoke trade was by far the largest part of its business. Many of its bespoke shoes were supplied to customers in the United States. From around 1930 it would appear that they supplied Brooks Brothers with ready-to-wear shoes. Though I have seen no copy of any actual agreement, it is suggested by the witnesses for the Defendant that this was an exclusive arrangement under which Brooks Brothers were the sole supplier of Peals’ ready-to-wear footwear in the United States. This seems likely since it is common ground that these shoes were supplied bearing the fox and boot device, the name ‘Peal & Co. Ltd’ and the words ‘made in England for Brooks Brothers’, in the following form:
10. The Brooks Brothers group included a company registered in the United Kingdom called Brooks Brothers (New York) Limited. This company was based in Regent Street, London, and was responsible for sourcing manufactured goods from traditional makers in Europe. Mr Raymond Jones worked for that company from 1951 and was responsible in particular for the Peals account.
11. In the early 1950s Peals started to run into difficulties. Both Mr Jones and Mr Moore put those difficulties down to the impossibility of finding good young staff prepared to learn the trade of bespoke shoemaking, which Mr Moore describes as ‘unglamorous, physically hard and repetitive’. As a result, Peals started to outsource the manufacture of their ready-to-wear shoes (including the shoes shipped to Brooks Brothers) to another company called Edward Green & Co. These shoes continued to be branded with the fox and boot device and the Peal & Co. name. The shoes destined for Brooks Brothers seem to have been shipped direct to the United States by Edward Green & Co.
12. By the end of 1964, things had reached a stage where Peals simply could not carry on trading. The directors announced to the staff of the company that the business was closing down. There is no evidence of what formal steps were taken to liquidate the company, but it appears on the face of it to have been a voluntary process. Certainly, there is no indication of the appointment of a liquidator or of the taking of any steps to preserve or maximise the return from the assets of the company. Mr Moore's evidence is that the company employees emptied the contents of the Wigmore Street shop into a van and took it to the factory in Acton to be burnt. The employees were told that they were free to salvage what might be useful to them in their future employment. As a result, many of the last makers such as Mr Moore retained their lasts, their benches and knives, and their customer lists so they could continue to supply shoes to the bespoke customers of Peals.
13. The only contemporary document evidencing the termination of the business of Peals is an article from the Associated Press agency dated 3 January 1965. This reads as follows:
‘ Custom Bootmaker in London Calls it Quits
London's most famous bootmakers are closing down because of trouble getting craftsmen to make their custom-made shoes. Rodney Peal, director and secretary of the 173-year-old Peal & Co. said Thursday the firm would close its custom operation Feb 27. ‘The new workmen haven't got the skill of the old craftsmen and work recently has not been up to standard’ said Peal, a member of the sixth generation to operate the firm…Peal said most of his 82 employees had already found work in the 10 or so custom bootmakers left in London…The firm stopped taking orders three weeks ago… ‘I'm very disappointed at the closing’ said Rodney. ‘I thought I was in this field for life.’ He said he hadn't decided what he would do now. Peal's readymade shoes, produced from the firm's lasts and special leather at factory in Northampton, will still be sold in the United States by Brooks Brothers of New York. But the custom-made shoes will be no more, and all the British sales will end.’
This report was described in the course of argument by counsel for the Claimant as a ‘press release’. This does not seem to be entirely correct — the wording of the report suggests an interview of some kind — but there is no reason to believe that the report does anything other than accurately reflect the intentions of those controlling Peals at the time, or the general manner in which those intentions were being expressed to the public in the United Kingdom.
14. Immediately before the date of this report, Peals had entered into an agreement of sale (‘the Agreement’) dated 31 December 1964 with Brooks Brothers (New York) Limited. In consideration of the sum of £3,000 Peal & Co. Limited (‘the Vendor’) agreed to sell free from all charges and encumbrances:
‘a. The goodwill of the business together with the exclusive right so far as the Vendor can grant the same to use the name of Peal & Co. or any variant thereof in any part of the world and together with all the Vendor's right title and interest in and to the unregistered trade mark a copy of which is attached hereto [attached was a copy of the device used on the Brooks Brothers shoes]
b b. All lists of the Vendor's customers who are either current or who might be reasonably expected to continue as customers of the Vendor
c c.All lasts patterns and dies used or useful in the business of the Vendor'
15. The Agreement stated in clause 3 that the purchase shall be completed on 1 January 1965 when the sum of £3,000 was paid, when assignments of the goodwill and the trade mark were executed and delivered in such form as the Purchaser shall reasonably...
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