H Young (Operations) Ltd. v Medici Ltd.

H Young (Operations) Ltd sue Medici Ltd for infringement of registered trade mark and passing off. Medici counterclaim for partial revocation of the registered trade mark on the grounds of non-use.

Some witnesses gave evidence live, some by witness statements accepted without cross-examination and some by hearsay statements. They consisted of people from both companies, independent shopkeepers and some members of the public. There was no real conflict of evidence – merely in some cases different perspectives of the nature of the parties’ respective goods. These differences are entirely understandable because differing shopkeepers and members of the public may have different perceptions, all of which are entirely reasonable. In view of the lack of conflict I do not propose to over-elaborate this judgment with detailed reference to the evidence. I just summarise the overall effect.

The claimants are the successors in title to a company called Animal Ltd. This in turn was the successor in title to a business started by two surfers in 1986/87. The business uses the trade mark “Animal”. Initially it sold watch straps and T-shirts. Over the years its range of products extended in a manner in which I have to consider in more detail below.

Initially the business was very much focussed on customers interested in surfing (water not the net). Although the business has expanded the goods have always carried some sort of “surf connection”. By this I do not mean that the goods sold have been for specialist use while actually surfing (for instance wetsuits) but that there has been an association with surfing in the sense that the target customers have been young (mainly below 30 and often below 20) and have wanted to convey in their garments an association with surfing. Of course the “Animal” brand is not unique in this sort of thing. Other brands, some better known, have done much the same sort of thing. One does not need evidence to know that, for instance “Fred Perry” garments, although originally specifically for tennis are now common casual wear. Indeed sportswear, or names associated with sports, is often now just part of the clothes of people you see every day in the street. Popular other examples, not so much associated with a particular sport, are “Nike” and “Adidas”. Over the years the “Animal” business expanded – again a matter I shall have to consider in more detail.

In March 1997 Animal Ltd registered “Animal” as a trade mark under number 2054886. The specifications of goods are as follows:

“Class 09:

Protective headwear, spectacles, sunglasses, retainers for spectacles, retainers for sports spectacles and sunglasses.

Class 14:

Jewellery, watch straps, watches, clocks and horological instruments, keyrings; but not including goods in the form of animals.

Class 16:

Printed matter, photographs, books, leaflets, adhesive stickers, labels, posters, stationery, cardboard articles; but not including goods bearing representations of, or relating to, animals.

Class 18:

Bags, backpacks, rucksacks, wallets and purses, straps, belts, keycases.

Class 20:

Display stands, display boards, picture frames, cabinets, dispensers, frames, shelves, keyboards for hanging keys, boxes and packaging containers.

Class 25:

Clothing, footwear, headgear, baseball caps, sweatshirts, T-shirts.”

The defendants are an English company whose moving spirit is a Mr Goodman. Medici produces and imports a collection of ladies’ fashion for wholesale to the United Kingdom market. Its business is essentially for elegant ladies’ fashion. One of the ranges which it imports goes under the trade mark “Animale”. This is pronounced in various ways – “-al”, “-arl”, “-arlie”, and perhaps others. This is hardly surprising. One cannot expect all customers and potential customers to react identically to a word such as this. The man behind this range is a Mr Ruc who lives in Indonesia. “Animale” has, I was told, success outside the UK. For instance it is quite widely advertised and known in France.

Medici’s main target market is the middle aged to older lady, particularly one looking for a dress or outfit for a special occasion. The “Animale” product is aimed at the younger end of Medici’s target market, ladies of 30-35 plus. The garments are simultaneously elegant and casual, the sort of thing that might be worn at a wedding, a casual dinner party of the middle class, perhaps particularly in summer or on the promenade in Nice or Torquay. Much of the range is designed to be coordinated, that is to say one item may well go with another, though of course many women buy clothes which can be used either individually with other garments. The garments are not very expensive.

Medici’s customers by and large consist of small individual shops. They do not sell to large chains or through mail order. I have, for instance, in this case a number of witness statements (mainly admitted as hearsay statements, though a few shopkeepers gave oral evidence) from proprietors of ladies’ fashion shops around the country (Marlborough, Gosforth, Norwich, Woodstock, Cardiff, Worcester and so on).

Medici does not make a big thing of the “Animale” range. They do not advertise it (although they do advertise their own products in, for example, “Harpers Bazaar” and “You and Your Wedding”). They no longer advertise in “Vogue” because they think their target market is rather older than “Vogue” readers. Essentially Medici offers “Animale” as an additional product to its existing range.

Medici first sold “Animale” products in the spring/summer season 1999. This led to some conflict with “Animal” as a result of which a hurried decision was made to rebrand the product for the autumn/winter 1999 season as “Medici Casual”. At some point later, use of “Animale” started again and has continued since. Whilst this was going on Mr Ruc launched an attack on the trade mark registration in the Trade Mark Registry essentially based upon allegations of descriptiveness or deceptiveness. It is hardly surprising that these failed. When the claimants discovered “Animale” clothing on sale in the United Kingdom in May 2001 these proceedings followed.

The key battle lies over the registration for “clothing” and also “T-shirts”. The parties agreed that logically the question of partial revocation came first since one cannot judge the question of infringement without knowing what the specification of goods is. I point out here that only infringement under s.10(2) of the Trade Marks Act 1994 (=Art.5.1(b) of Directive 89/104) is now relied upon. Originally there was an allegation based upon s.10(1) (= Art.5.1(a)). This was, in my judgment rightly, abandoned. It depended on proof that “Animale” is identical with “Animal”. The two words are self-evidently not identical, having different pronunciation however pronounced. Moreover, “Animale” is a foreign word in some languages and the word has a slight foreign “feel”. This is not a case which can be regarded as taking the mark and merely making an addition – the addition makes a difference to the mark itself.

The relevant provision for revocation for non-use after the mark has been on the register for more than 5 years (as here) is s.46(1)(b) (= Art.10(1)). It reads:

“The registration of a trade mark may be revoked on any of the following grounds – (b) that such use [i.e. genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or service with which it is registered] has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use.”

It is common ground that the relevant period here is from 1^st April 1997 until 1^st April 2002.

Mr Mellor, for the defendants, accepts there has been use of “Animal” for some goods falling within some of the specifications in the different classes. But, he says, the kinds of goods for which use has been proved is too narrow for the specifications of goods to be maintained in their full width.

Mr Roberts, for the claimants, accepts that there should be partial revocation in some, non-crucial, respects. The battle falls into two halves – that which really matters and that which does not. That which matters is the Class 25 specification. This consists of “clothing, footwear, headgear, baseball caps, sweatshirts, T-shirts.” If maintained in its full width then, following the provisions of s.10(2) the only question is whether there is a likelihood of confusion between the two marks. The part of the battle which does not really matter consists of attacks on the specifications of goods in other classes. It does not matter to Medici: they do not sell goods like any of these, so revocation, partial or whole, for these classes could not give them a defence. The attack is only launched as a piece of unimportant retaliation or possibly as a bargaining chip in negotiations.

I turn to the important aspect, the partial revocation sought in relation to the Class 25 specification. It is common ground that the onus of proving use lies upon the proprietor (see s.100). Mr Mellor accepts that the proprietors have proved use over a range of garments during the relevant period. The goods are set out in Annex 3 of his closing skeleton argument. The goods particularly include T-shirts, jeans, vests, sweatshirts, hoodies, track tops, shorts, jumpers, cardigans, parka jackets, camisoles, strappy sundresses, printed cotton skirts, swimwear, beanie hats, sun hats and some others I need not mention.

Mr Mellor, however, goes on to point out that essentially all these goods have been aimed at those who want to have some sort of “surf” image. Thus, although he accepts that the goods have now found their way into high street shops, these are sportswear or ski-wear specialist type shops rather than “ordinary” clothing shops. He is in more difficulty as regards use in mail order catalogues which he accepts did happen in relation to some of the goods, particularly T-shirts and sweatshirts towards the end of the five year period. The heart of the image of the claimant’s products says Mr Mellor – its unique selling proposition in adspeak – has been the surf image. So, he submits, the specification should be limited to the itemised specific goods with the qualification that they all be “casual surf type wear for men” or “casual surf type wear for women aged under 30”.

The most extreme form of Mr Mellor’s argument can perhaps be seen in relation to T-shirts. Both sides sell T-shirts, one bearing the word “Animal” on its front, the other bearing the word “Animale”. In each case the word appears with a picture – a sporty type picture in the case of “Animal” and a non-sporty (such as palm-trees) in the case of “Animale”. Mr Mellor suggests that the “Animal” trade mark registration should be limited to T-shirts being “casual surf type wear for women aged under 30”.

What then are the principles for partial revocation? The answer is to be found in two recent decisions of the Court of Appeal – Thomson Holidays v Norwegian Cruise Line Ltd [2003] IP&T 299 and West (TA Eastenders) v Fuller & Turner 31 January 2003 [2003] EWCA Civ 48.

In Thomson the claimant had the mark “Freestyle” registered for the arrangement and booking of travel tours and cruises. It had only used the mark in relation to a very limited sphere of services and, in particular, had never used it in relation to cruises. Nonetheless partial revocation so as to exclude cruises was denied. In ESB a partial revocation from beer to bitter beer was allowed. The relevant test is what is:

“A fair description which would be used by the average consumer for the products in which the mark has been used by the proprietor”.

(See ESB para 53).

The reason for bringing the public perception in this way is because it is the public which uses and relies upon trade marks. I do not think there is anything technical about this: the consumer is not expected to think in a pernickety way because the average consumer does not do so. In coming to a fair description the notional average consumer must, I think, be taken to know the purpose of the description. Otherwise they might choose something too narrow or too wide. Thus, for instance, if there has only been use for three-holed razor blades imported from Venezuela (Mr T.A. Blanco White’s brilliant and memorable example of a narrow specification) “three-holed razor blades imported from Venezuela” is an accurate description of the goods. But it is not one which an average consumer would pick for trade mark purposes. He would surely say “razor blades” or just “razors”. Thus the “fair description” is one which would be given in the context of trade mark protection. So one must assume that the average consumer is told that the mark will get absolute protection (“the umbra”) for use of the identical mark for any goods coming within his description and protection depending on confusability for a similar mark or the same mark on similar goods (“the penumbra”). A lot depends on the nature of the goods – are they specialist or of a more general, everyday nature? Has there been use for just one specific item or for a range of goods? Are the goods on the High Street? And so on. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made.

Moreover, trade marks do not normally vanish at the time of purchase. Labels are a constant reminder of the maker. An average consumer would bear this in mind in formulating a fair description. That is a particular answer to Mr Mellor’s suggestion that the fair description should be limited to the intended age of the purchaser. Today’s girl surfer is tomorrow’s wearer of elegant “Animale.”

Thus I do not accept Mr Mellor’s submission that the specification should be limited to exactly the kind (including “image”) of goods for which use has been proved. It follows that I do not accept Mr Mellor’s suggestion that the goods of the parties are so far distinct in commercial terms that there can be a sensible revocation confining “Animal” to “surf-type” goods. This would not be a meaningful distinction to most members of the public (including some of the witnesses). Nor does it make sense to try to limit the mark to younger adults. This is an exercise in pigeon holing which I do not think the ordinary consumer would undertake if asked to form, for trade mark purposes, a fair description of the goods for which the mark had been used.

So, should “clothing” in the specification be qualified in some other way? The term covers a very wide spectrum of different sorts of garments. But putting aside such specialist things as diving suits, wetsuits, bullet- proof vests and so on, there is a core of goods which are likely to be bought by ordinary consumers for different purposes in their daily wear. The same woman or girl is likely to own T-shirts, jeans, dresses, both formal and informal. Both parties’ goods could easily end up in the same wardrobe or drawer. He or she knowing of the range of goods for which use has been proved would, I think, take “clothing” to be fair as a description. He or she might limit the clothing to “casual clothing” but I have concluded in the end that “clothing” is appropriately fair.

That essentially concludes the real point of the case. For given the specification of “clothing” the only question is whether there is a likelihood that “Animale” is confusingly similar to “Animal”. It obviously is.

Actually I would have been of the same opinion even if the specification had been reduced to “casual clothing”. You cannot have two such similar brand names in wide general use for daily wear. Whether the specification is “clothing” or “casual clothing” you get to the same result.

Mr Roberts also alleged passing off but sensibly accepted that his case on trade marks was the stronger. If he could not win on trade mark infringement he could not win on passing off. So I say no more about it.

I turn to the question of rectification of the specifications of goods in classes other than Class 25.

Class 9. Here the dispute is over “protective headwear”; use being accepted for the remaining goods. Only motorcycle helmets have been the subject of use. I think it is appropriate that the specifications of goods be narrowed down to motorcycle helmets. The claimants suggested something wider, namely “helmets”. This would include pushbikers’, builders’, cricketers’ and other sorts of helmet. I do not think the public would think that a fair description – it is too wide.

Class 14. Here the dispute is over “clocks and horological instruments”. The use has been only for watches and chronographs. Amendment to “horological instruments” was agreed.

Class 16. Use for photographs and posters is accepted. The dispute is over “books” and “cardboard articles”. There is no evidence of any sale of either of these items. Indeed, the only item suggested to be a book I do not think can properly be so called (it is an advertising pamphlet) and accordingly, so far as books are concerned, there simply has been no use. As regards cardboard articles it is proved that the claimants have used the mark by selling to shopkeepers cardboard advertising material. That is just about a use in relation to “cardboard articles being point of sale materials.” “Cardboard Articles” as such is obviously too broad, covering as it such obviously disparate things as storage boxes, ice-cream containers and cut-out cardboard models. It is agreed that “printed matter” should go.

Class 18. It is accepted that “straps” should go.

Class 20. It is accepted that “picture frames” should go, that “dispensers” should be narrowed to “brochure dispensers” and “frames” should be narrowed to “shop display units.” There was a dispute over “shelves”, the claimants seeking to retain it and the defendants contending that it should be limited to “shop display shelves” which are the only kind of shelves for which there has been use. I agree with the defendants. “Shelves” would cover all sorts of different things – bookshelves, shelves to go over radiators and so on.

Finally in Class 20 there was a dispute about “boxes” and “packaging containers”. The only use of these has been the boxes or packaging in which the goods bought by the customer are contained. I do not regard this as use of the trade mark in relation to boxes or packaging containers at all. Only a trade mark lawyer would think for a moment that when he buys something in an ordinary box or bag that there is a trade in boxes or bags. And a sensible trade mark lawyer would go on to say “ingenious but too daft”. Accordingly these goods must be removed from the specification.

Class 25. I finally turn to other disputed items in Class 25. First “footwear.” The dispute is whether “casual” should qualify this. There has been use for casual shoes. It would seem to me here that it would be appropriate to cut the specification down to “casual footwear” – there is not the same breadth of use as for items of clothing. Next “headgear.” The only use has been in relation to knitted hats, fleece hats, and sun hats. The claimant wants to retain “headgear” in all its width, which would include all sort of headgear, for instance top hats, bowler hats and judges’ wigs. Applying the Thomson test and I think “headgear” is too wide. The claimant offers no lesser specification and I accordingly accede to the defendant’s suggestion to limit the specification to the three kinds of headgear for which use has been proved.

In the result the action succeeds. The counterclaim by and large fails, save in respect of matters which I have mentioned above. I will hear counsel.