Unilever Plc v Griffin & Anor

This is an application by Unilever plc for an interim injunction in intended proceedings. Although it is technically without notice, the prospective defendants have in fact been given informal notice of the application and have not appeared. As discussed with counsel for Unilever, the injunction is sought for a limited period of seven days in the first instance

The application concerns a version of a party political election broadcast which, as I understand it, is intended to be broadcast on television by the British National Party (“the BNP”) in the near future. The version in question was posted on the BNP’s website at www.bnp.org.uk at around 6 o’clock yesterday evening by way of a preview of the forthcoming television broadcast. It appears from screen shots from the website in evidence that it was posted on that website by Simon Bennett, the proposed second defendant, who, it appears, is the BNP’s webmaster.

The version of the broadcast posted on the website is complained of by Unilever because it features, both at the beginning and, even more prominently, at the end, a picture of a jar of the well-known product Marmite, which is marketed by Unilever. The jar appears at the top left of the screen at the beginning opposite the BNP logo that appears at the top right. Then at the end of the broadcast there is a screen that bears the slogan “Love Britain Vote BNP” together with a large picture of the jar.

Unilever became aware of the offending clip at around 9 o’clock this morning. Shortly after 10 o’clock, it instructed solicitors and at around 11 o’clock they made contact with the BNP’s Press Office. Since then, they have been in dialogue with representatives of the prospective defendants, the upshot of which is that the BNP has withdrawn the offending clip from the website, and has given Unilever an assurance that the real election broadcast that will be broadcast in due course does not feature a picture of the Marmite jar, but it has declined to give any undertakings. Moreover, the response has been rather equivocal in certain respects, as I will enlarge upon in due course.

In addition to that, Unilever has recently received via Sky a picture which appears to show a mocked-up version of the Marmite jar bearing, instead of the normal label, a version of the label in which the word “Marmite” is replaced by the words “Love Britain Vote BNP” and the cooking vessel is replaced by a heart-shaped Union Jack emblem.

In these circumstances, Unilever are intending to bring proceedings in respect of three different causes of action. Before turning to those, it is important to note that this is a situation where, as counsel for Unilever accepted, section 12 of the Human Rights Act 1998 is engaged because this is an application which affects the exercise of the right to freedom of expression. In those circumstances, subsection (3) applies, and that provides as follows:

“No such relief [that is to say relief which might affect the exercise of the Convention right to freedom of expression] is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that the publication should not be allowed.”

The interpretation of that provision was considered by the House of Lords in Cream Holdings Ltd v Banerjee [2004] UKHL 44, [2005] 1 AC 253. Its application in the context of registered trade mark infringement has been considered by the Court of Appeal in Boehringer Ingelheim Ltd v Vetplus Ltd [2007] EWCA Civ 583, [2007] FSR 29. The upshot is that the general rule where section 12(3) applies is that the claimant must establish that it is probably going to succeed at trial. However, that general rule is not an inflexible one. On the contrary, in appropriate circumstances a lower degree of likelihood is acceptable, as was stated by Lord Nicholls of Birkenhead in Cream v Banerjee at [22]:

“But there will be cases where it is necessary for a court to depart from this general approach and a lesser degree of likelihood will suffice as a prerequisite. Circumstances where a lesser degree of likelihood will suffice include those where the potential adverse consequences of disclosure are particularly grave or where a short-lived injunction was needed to enable the court to hear and give proper consideration to an application for interim relief for attending the trial or any relevant appeal.”

Counsel for Unilever submitted that the present application was precisely one of the kind mentioned by Lord Nicholls at the end of [22], viz. a short-lived injunction, and accordingly a lesser degree of likelihood sufficed. In the alternative, he submitted that even if the general rule applied, it was probable that Unilever would succeed at trial on at least some of its causes of action.

I turn then to consider the three causes of action that are relied on. The first is infringement of registered trade marks. Unilever is the registered proprietor of a number of relevant registered trade marks. These include registrations for the word MARMITE and for various versions of the label down the years. So far as the label is concerned, probably the most relevant registration is number 2333143, which is a registration dating from 2003 in classes 29 and 30.

Counsel for Unilever put his case for infringement under section 10(3) of the Trade Marks Act 1994, which implements Article 5(2) of the EU Trade Marks Directive. I consider that Unilever faces considerable hurdles in this claim, however.

The first is that it a requirement for infringement under Article 5(2) that the use of the sign in question should be “in the course of trade”. The jurisprudence of the Court of Justice of the European Union in a number of cases is that it means that occurs “in the context of commercial activity with a view to economic advantage and not as a private matter”: see most recently Joined Cases C-236/08 to C-238/08 Google France SARL v Louis Vuitton Malletier SA [2010] ECR I-0000 at [50].

The use in question in the present case is in the context which appears to me to be unequivocally political. The clip in question is a version of a proposed party political election broadcast. We are in the midst of a general election campaign. I have viewed the clip from beginning to end and it is abundantly clear in my judgment that the purpose of the clip is to encourage those viewing it to vote for the BNP.

Counsel for Unilever argued that that was not the only purpose of it and, in particular, not the only purpose of the posting of the clip on the BNP’s website. He contended that a secondary purpose was to raise the BNP’s profile generally and to increase its support. More importantly, to my mind, he submitted that a tertiary purpose was to encourage viewers to donate to the BNP. In support of that, he relied upon the fact that the website undoubtedly carries material which encourages those to donate. Thus there is a section on the page which reads as follows:

“The final push. We have very limited time to make political history and send our first British National Party MPs to Westminster. Please help us achieve this by making a donation below. .. Donate now ”

I am prepared to accept that it is arguable that the website taken as a whole goes beyond the merely political in encouraging viewers to make donations. However, it still seems to me to be very difficult to say that the use of the sign complained of takes place in the course of trade. The actual clip itself does not contain any exhortation to donation. Instead, the clip seems to me to be exclusively political.

A further difficulty is caused by the requirement that the use be “in relation to” goods or services. For the purposes of a claim under Article 5(2), it does not particularly matter what the goods or services are, but nevertheless they have to be identifiable goods or services. Rightly, counsel for Unilever disclaimed any suggestion that there was use in relation to goods, but nevertheless one still has to ask what services is there use in relation to? Counsel suggested that there was use in relation to informational services and a service of soliciting donations. I have some difficulty in regarding either of those as services at all within the meaning of the Trade Marks Directive. In any event, I have grave doubts that the use that is complained of is in relation to any services at all.

My conclusion so far as registered trade mark infringement is that, if the applicable threshold is that the claim will probably succeed at trial, my present view is that that this claim does not cross it. On the contrary, the claim is more likely than not to fail at trial. Furthermore, I am very doubtful that Unilever even gets over the lower threshold referred to by Lord Nicholls in his judgment in Cream v Banerjee.

I turn to the next cause of action, which is copyright infringement. In the time available, the evidence on this score is understandably incomplete. Nevertheless, it seems to me that to be highly likely that Unilever will be in a position to establish that it owns, or is the exclusive licensee of, the copyright in the artistic work comprised by the current version of the label on the Marmite jar. Moreover, it seems very likely that that artistic work will still be in copyright given that the registration to which I referred earlier, which appears to be of an earlier generation of the label, dates from as recently as 2003.

Turning to the question of infringement, prima facie there has been infringement of that copyright work through the acts of copying and making available to the public. If one considers what defences there may be, it is by no means obvious that there is any defence available to this claim at all. I would imagine that a well-advised defendant in the shoes of the BNP might try and run a defence of public interest under section 171(3) of the Copyright, Designs and Patents Act 1988. As counsel for Unilever submitted, however, the public interest defence to copyright infringement, as it presently exists in English law in the light of the decisions of the Court of Appeal in Hyde Park Residence Ltd v Yelland [2001] Ch 143 and Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142, [2002] Ch 149, is somewhat limited and would probably not assist the defendants in the present case. On the other hand, I have to say that this seems to me to be an area of the law where there may be room for further development, particularly in a political context such as this.

As matters stand, however, it seems to me that at minimum one can say that Unilever’s case crosses the lower threshold identified by Lord Nicholls in Cream v Banerjee. Indeed, at the moment I take the view that it gets over the higher threshold of being more likely than not to succeed.

The third cause of action relied upon is passing off. In short, Unilever says that this use of the Marmite jar is likely to lead at least some viewers to conclude that the manufacturer of Marmite (namely, Unilever) has endorsed or sponsored the BNP or, at any rate, permitted the use of the image of the Marmite jar, contrary to the fact. That is not a fanciful suggestion is shown by evidence consisting of comments that have appeared on the BNP’s website. For example, one comment reads: “Why is it sponsored by Marmite?” Another comment reads:

“I really do not get the Marmite thing. Some people say that Marmite is sponsoring us and some say they have sneaked it in to ridicule the BNP. Some say it is a love us or hate us message.”

Thus there is already in the short space of time since the clip was originally posted evidence to suggest that some viewers have taken the use of the image of the Marmite jar to indicate endorsement or sponsorship by Unilever. Accordingly, Unilever says that there is a good claim for passing off.

Again, I think that is a claim that gets over the general threshold established in the Cream v Banerjee and certainly over the lesser threshold identified by Lord Nicholls.

Accordingly, my conclusion is that on two out of three of its causes of action, Unilever has established a case which clearly crosses the lower threshold identified by Lord Nicholls in Cream v Banerjee and in my judgment also crosses the higher threshold.

Turning then to the balance of the risk of injustice, Unilever says quite simply that it has no desire for its well-known brand to be associated with this campaign on behalf of the BNP. It points to the fact that the BNP is, to put it mildly, a controversial political party. It says that such an association would be damaging to the reputation of its trade marks and that the damage would be insidious and irreparable. I am entirely persuaded that that is a highly arguable point of view.

Against that, of course, one has to consider the fact that the clip has been removed from the website and thus it might be said that there is no need for an injunction. So far as that is concerned, however, I think Unilever is right to be concerned that that is not necessarily the end of the story. First, the clip is still available on YouTube. Secondly, there is the question of the image which was received via Sky. Thirdly, there is the attitude of the BNP to the complaint, which has been inconsistent to put it mildly. Although it has removed the clip from the website, as I have said, it has not given any undertakings. Moreover, Nick Griffin, the leader of the BNP, who is the proposed first defendant, has been quoted on a blog as saying:

“Unilever PR men and lawyers all over us like a rash. Very upset at our using Marmite in our TV broadcast. They should have thought of that before marauding the one for their Hate Party on us. They will be even more upset if they push us further and I start eating a jar of Marmite on my next live TV appearance.”

That is scarcely suggestive of defendants who have seen the error of their ways. In addition, it rather runs counter to the suggestion made by the BNP in a press statement that was released during the course of the day suggesting that it has been the victim of some kind of smear campaign in that some third party has inserted an image of the Marmite jar into its clip, contrary to its wishes.

So far as the defendants are concerned, it is impossible to see why they should need to use a picture of the Marmite jar as part of their political message. Indeed, as I have said, the BNP has said that the image is not intended to form part of the actual election broadcast. Moreover, there is evidence to suggest that the posting of this clip on the website was some kind of tit-for-tat on the part of the BNP in response to a recent advertising campaign of Unilever’s involving a party called the “Hate Party”.

Accordingly, in my judgment, the balance of the risk of injustice, particularly over a short period, is strongly in favour of the grant of an injunction.

I am therefore satisfied that injunctive relief is appropriate, particularly for the short period of seven days now sought, in order to allow the position to be more fully investigated on both sides.

For those reasons, I will grant an injunction, but the terms of that injunction will require further consideration.