French Connection Ltd & Ors v Fresh Ideas Fashion Ltd & Anor

MR JUSTICE KITCHIN: This is an application for a summary judgment in an action for trade mark infringement and passing off.

The claimants form part of the French Connection group of companies which carry on business in the United Kingdom and elsewhere as fashion retailers. The first defendant is a United Kingdom private limited liability company and the second defendant is the sole director of the first defendant.

The background to the claim may be summarised as follows. The first and second claimants are wholly owned subsidiaries of the third claimant. The first claimant is the wholesale arm of the French Connection group of companies and sells French Connection products to the second claimant and to wholesale customers outside the group. The second claimant sells these products to the public in the United Kingdom through its retail stores.

The claimants are the proprietors of the following registered Community trade marks:

The claimants are, according to the Particulars of Claim, which is signed with a statement of truth, well-known to the public throughout the world, including the UK, as retailers of fashion clothing and accessories for men and women. They have made extensive use of the brand names French Connection and FCUK in promoting, advertising and selling their goods in the UK and worldwide. By reason of this use they claim to have acquired a substantial goodwill and reputation in the UK in relation to fashion clothing and accessories. Specifically, they say that they have made continual use in the UK of the French Connection brand name since 1972 and of the FCUK brand name since 1997.

Further details of this use are set out in a witness statement of Alice Close dated 10th May 2005 and filed in support of the application. She is the General Counsel for the claimants and is responsible for advising the French Connection group on all legal matters. She has given evidence, which for the purpose of this application I accept, that in the UK the claimants are indeed well-known retailers and wholesalers of branded fashion clothing and accessories for men, women and children, as well as men’s and ladies’ toiletries, fragrances, eyewear, watches and shoes and other personal and household items. She explains that the claimants’ business was founded in 1969 and that they began their first retail activity in 1973.

As I have mentioned, the FCUK brand was introduced into the UK in the spring of 1997 and launched under a major advertising campaign to promote brand awareness. FCUK is, as I think most members of the public are now well aware, an acronym derived from French Connection United Kingdom, and it is used by the claimants together with their brand name French Connection.

Miss Close explains that the claimants’ range of products is available through their own retail outlets on the high street and in airports, through concessions in department stores, independent retailers and on the internet. The claimants’ products are sold in 55 cities and in over 6,300 stores in the UK. Since 1997 sales in the UK of branded products by the claimants to licensees and wholesale customers have amounted to some £650m.

Advertising and marketing of the claimants’ brands of the products is extensive and conducted through a wide variety of media, which Miss Close details in paragraph 15 of her witness statement. Substantial sums have been spent on advertising over the years. In excess of £2.8m was spent in 1997/98; £3.1m in 1998/99; £4.2m in 1992/2000 and £5.7m in 2000/2001. Even greater sums have been spent in the years ever since.

In these proceedings the claimants complain of the production, possession for the purposes of trade and sale by the defendants of a variety of items. On the application before me today reliance is specifically placed upon the production, possession for the purposes of trade and sale of two sorts of bag detailed in the Particulars of Claim.

First, reliance is placed upon bags which were seized from the premises of the first defendant on 28 September 2004. Apparently some 1,370 bags were taken into the possession of those who carried out the operation. I have been provided today with a sample of one such bag. It bears quite clearly across its front the letters FCUK in lower case, in a style which to my eye is very similar indeed, if not identical, to that used by the claimants. That lettering appears in white on a black background. Above this white lettering appears the word "French" and below it the word "Collection". Both of these are in orange type, but again in a font and style which is to my eye the same as, or at least extremely similar to, those used by the claimants in connection with their bags. Of course, there is the difference that the defendants’ bag bears the word "Collection" as opposed to the word "Connection".

The second bag on which reliance is particularly placed today is a smaller bag which bears the letters FCUK in a stylised italic script. This bag was found in the possession of the second defendant on 11th December 2002.

In the case of both sorts of bag, I have no doubt that they were possessed by the defendants for the purposes of business.

Against this background I must consider the application before me for summary judgment. The principles which I should apply are well established and set out in CPR Part 24:

In order to defeat an application for summary judgment it is sufficient for a defendant to show some prospect of success, but it must be a real prospect of success and for that purpose the court will disregard prospects which are false, fanciful or imaginary. The defendant must have a case which is better than merely arguable.

The defendants have, I am quite satisfied, been given full and proper notice of this application and yet they have chosen not to file evidence in response to that relied upon by the claimants, nor to appear before me today. Indeed, I understand that yesterday contact was made with the second defendant and he was told again that this hearing would be taking place today, but he indicated that he did not intend to attend.

I must now, therefore, consider the particular claims made in respect of the goods to which I have referred. Taking first the issue of trade mark infringement, I must consider whether or not the claimants have made out their case of infringement of the Community trade marks to which I have referred and, in particular, whether or not they have established an infringement of the right conferred by Article 9 of the Community Trade Mark Regulation 40/94. This provides that:

Taking first the bag which bears the letters FCUK and the words “French Collection”, I am satisfied that the use of FCUK on this bag falls within Article 9.1(a) of the Regulation. This sign is to my mind for all practical purposes indistinguishable from the registered mark.

So far as the second bag to which I was referred is concerned, this bears the letters FCUK in a stylised form, which is not, as I understand it, used by the claimants. That, of course, does not mean it is an answer to the infringement claim. I have, however, reached the conclusion that this is probably not an Article 9.1(a) infringement because of the particular way in which it is presented. I consider there is an issue for trial as to whether or not that particular presentation is identical to the registered mark. Nevertheless, I am quite satisfied that the defendants have no defence to the claim that the mark which they have used is so similar to the registered mark FCUK that there exists a likelihood of confusion on the part of the public. I consider it is quite clearly intended to conjure up the FCUK trade mark in the minds of consumers. Further, I believe it would be referred as FCUK by members of the public who see it. Moreover the marks are visually extremely similar. I have reached the conclusion the claimants have established that there is no real prospect of the defendants successfully defending this claim.

As to the second sign which appears on the first bag, “French Collection”, this is quite clearly not an Article 9.1(a) infringement, but nevertheless I am again satisfied that the claimants have made out their case that the use of the sign “French Collection” on these goods, which are of course identical to the goods in respect of which the mark French Connection is registered, does constitute use of a sign which is so similar to that registered by the claimants that their exists a likelihood of confusion on the part of the public. Visually the two marks are extremely similar. Phonetically the two marks are similar and conceptually it seems to me that once again the clear intention behind the adoption by the defendants of this mark is to conjure up the claimants’ registered mark in the minds of consumers. I have no doubt that there does exist a likelihood of confusion arising from the use by the defendants of this sign.

Turning to the claim in passing off, the elements that a claimant must establish to make a good a case in passing off are well established. It must be shown that the claimant has established a goodwill in relation to its mark such that the public, or at least a significant section of the public, recognise the mark as denoting the goods or business of the claimant. Secondly, it must be shown that the mark adopted by the defendant is calculated to cause deception and confusion. By calculated is meant that this is the likely result of the defendant's activities. Third it must be shown that such deception and confusion is likely to result, or has resulted, in damage to the claimant.

As to these requirements, I am satisfied on the evidence before me that the claimants have indeed established that they have acquired at all material times a substantial reputation and goodwill in the FCUK and French Connection trade marks which they have used in connection with their business in the manner which I have described. Secondly, I am satisfied that the activities of the defendants to which I have referred are calculated to cause deception and confusion and to lead members of the public to believe, contrary to the fact, that the goods that they are selling are made and sold by or connected in the course of trade with the claimants. Moreover, activities of this kind must inevitably damage the claimants in their business. In the circumstances I consider that the claimants have established before me that the defendants have no real prospect of successfully defending the claim in passing off.

Before concluding I must however refer to certain matters which have been referred to by the defendants in their defence. First of all, the defendants contend that they showed the marks of which complaint is made in those proceedings to trading standards officers and therefore had no reasonable grounds for believing that they were doing anything wrong. Be that as it may, I accept the submission advanced on behalf of the claimants that the fact that the defendants may have believed they were not doing anything wrong is no defence to a claim for trade mark infringement or for passing off.

Second, the defendants have contended in their defence that they have a right in common law to use the marks of which complaint is made on the grounds that their use preceded the use of the registered marks by the claimants. As to this the defendants have not adduced any evidence as to the nature or extent of such use, and, having declined to attend before me today, have not drawn to my attention any matters which in any way support the contention advanced in their pleading. Further, I accept the submission advanced by counsel for the claimants that it is significant that the first defendant was only incorporated on 28th September 2000 and the claimants have used the mark French Connection since 1972 and the mark FCUK since the spring of 1997, that is to say in each case a number of years before the date of the first defendant's incorporation.

In the absence of any elaboration by the defendants of the nature or extent of their alleged early use, I am not prepared to accept today that the mere contention they have advanced gives them any real prospect of successfully defending these proceedings. No details are provided in the defence as to the nature or extent of their alleged early use, and I am given absolutely no material upon which to assess the allegation which they have made and, in all the circumstances, I feel unable to attach any significant weight to it.

Finally, the defendants contend that their prior use gives grounds for objecting to the validity of the registered trade marks upon which the claimants rely. I accept the submission advanced on behalf of the claimants that, quite apart from the matters to which I have already referred, there are two further difficulties associated with this contention. First, the defendants would have to establish that as a result of such use they would have been entitled to prevent the claimants from using the marks French Connection and FCUK, for example by way of a claim in passing off, and there is nothing before me to suggest that the defendants would have any prospect of succeeding in such a claim. Secondly, it seems to me there is considerable force in the submission advanced by the claimants that the defendants have acquiesced in the claimants’ use of the marks French Connection and FCUK for at least five years and are therefore not in a position to seek to invalidate these marks by virtue of Article 53.2 of the Regulation.

I am supported in the conclusions which I have reached by the fact that the defendants are well aware of these proceedings. It has been pointed out to me on behalf of the claimants that the defendants have said that they had gathered a number of witness statements by 14th September 2005 and were actively seeking others, but none have been produced. Further, on 17th August 2005 an order by consent provided directions for the disposal of this summary judgment application, and by that order the defendants were required to file their evidence in relation to the application 10 days before the date on which the application was listed to be heard. The order having been made by consent, it must be taken that the defendants understood its terms.

Further, the defendants were informed at the end of September that the hearing would float from 2nd November and any evidence would therefore have to be served by 24th October at latest. More recently the defendants were reminded that their evidence was due by 24th October. The claimant's solicitors went so far as to explain the various ways by which evidence could be served and the timing involved in each such method.

In the circumstances I consider the defendants have had ample time in which to advance before me any matters which they considered to be relevant to this application, but they have declined so to do. For all these reasons I have reached the conclusion that the claimants are entitled to summary judgment on both their claims.