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Tuesday, 8 November 2011

The Fox, the Fish and the Folly: a fable for our times

There are two views which one can take with regard to a litigant who represents himself in intellectual property proceedings. One might view him a a plucky individual with the guts and initiative to dispense with unnecessary expenses and get the job done in a direct, no-nonsense fashion. Alternatively, he might be seen as a foolhardy, ill-advised soul whose decision to plough the lonely furrow runs the risk of making his efforts at do-it-yourself both unrewarding and more expensive for all concerned. This Kat had no doubt as to which of the two categories the defendant belonged in Fox International Group Ltd v Jay Folly [2010] EWPCC 30, a decision last Tuesday from Judge Birss QC in the Patents County Court, England and Wales.  

Making short work of the sole defendant ....
Fox made and supplied fishing equipment in connection with which it had used the word STALKER, which it had registered as a Community trade mark, since 2001. From December 2009 Folly sold fishing equipment on the internet, under a device mark which represented the word "Stalker", replacing the "T" with a picture of an angler holding a fishing rod, and in which the word 'tackle' was also portrayed (see illustration above, right). Fox sued Folly for trade mark infringement, alleging both double-identity infringement (same marks, same goods) under Article 9(1)(a) of the Community Trade Mark Regulation and likelihood-of-confusion infringement (same and/or similar marks and goods plus likelihood of confusion) under Article 9(1)(b). Passing off was also alleged, but that claim didn't need to be heard.

Folly argued that there was no double-identity infringement since the respective marks weren't identical: his was actually "Stalker Tackle" plus the T-shaped angler, while Fox's trade mark was really FOX STALKER because it used STALKER together with the prefix FOX. In any event, he said, "stalker" is a generic term, so Fox's mark was invalid in the first place. Finally, if all else failed, there was no infringement since his use of the word "stalker" was not an indication of origin, being purely descriptive, "stalking being an angling term for "mobile fishing".

This uncomfortably weak array of arguments might lead the reader to suspect that Folly was well named, unless he had rock-solid evidence on which to support his contentions (which he did not). The extent of his folly can be further gauged from the fact that he represented himself -- even though the judge encouraged him at the case management conference to get himself some legal representation.  Any IP lawyer, receiving instructions from him on these facts, would probably have said something along the lines of "give up, come out quietly with your hands raised high above your head and say 'Don't shoot! I'm sorry, I won't do it again ...'"  A lawyer's advice at that stage would surely be less expensive than the cost to him of contesting the incontestable.

As it was, Judge Birss QC was as kind and gentle to Folly as one could ever hope for, seeing as he was giving judgment for Fox. In his view:

  • Fox didn't use the word STALKER only in tandem with the word FOX -- but it frankly didn't matter whether the company did or not since double-identity infringement under Article 9(1)(a) is measured with regard to the mark which is registered -- and that was the word STALKER alone.
  • Folly used the word STALKER alone, and that word was plainly identical to Fox''s trade mark. However, Folly's device wasn't just the word "stalker" -- it was a sort of "stalker-plus" because it included a striking image of an angler with a rod,  which was not identical to Fox's STALKER word mark.  This didn't help Folly, though, since he used the word "stalker" as a badge of origin for products which he wasn't just describing but was selling. For example his website stated "Welcome to the Stalker website" and "We will be adding to our range..." and the "We" clearly referred back to "Stalker" and showed that, to someone viewing the site, "Stalker" referred to the entity from which the goods originated. No-one looking at Folly's website or eBay pages would think he was using the word in a descriptive sense. This was real Article 9(1)(a) infringement and there was no defence of honest descriptive use.
  • As for 'likelihood-of-confusion' infringement, it had to be asked if Folly's use of his mark without the word 'Tackle' (the usual way he used it) gave rise to a likelihood of confusion. The average purchaser of fishing goods who was familiar with Fox's products would generally associate them with its FOX mark, but would also be aware that Fox's goods were often just marked STALKER. It's actually more difficult to spot a sign that's missing (e.g. where there's no FOX with the STALKER) than spotting the presence of one that's there. Even if a purchaser spotted the absence of the word FOX on Folly's goods, the impact of that revelation would not be enough to negate his natural assumption that Folly's goods came from the same source as the STALKER goods which he already knew about.  Folly's attractive little device therefore created a likelihood of confusion.
  • There was no evidence that Fox's STALKER mark was or had become a common name in the trade for angling kit in result of either Fox's acts or omissions, which would have given Folly an escape route under Article 51 of the Regulation.  Nor could it be argued that STALKER was not inherently distinctive and thus vulnerable to an invalidity attack under Article 52.  

Deceptive mark? Where a fox is a bear here

3 comments:

Richard Vary said...

As ever I very much enjoyed reading this post. But I think we should be careful not view litigants in person as a different class, whether good or bad. We have had several litigants in person against Nokia: indeed I've just spent an enjoyable morning in the Wandsworth County Court defending such a claim. I accept that some can raise hopeless arguments or complete red herrings. If you let them, they can cause costs to spiral. But solicitors and well funded counterparties can do that too: when they do it, it is on a significantly greater scale. Other litigants in person I have seen are well organised, efficient and persuasive advocates. I strongly believe that our courts, whether the Wandsworth County Court or Patents County Court, should be as open to litigants in person as they are to industry, with our solicitors and QCs. And we should be as slow to generalise or criticise mistakes as we are in with our professional colleagues.

Anonymous said...

I do agree with you Richard. However, it is more likely than not that the litigant-in-person received some form of legal advice before representing him/herself in court. Personally, it may be easier for a litigant-in-person to represent themselves in copyright/designs claims but more difficult in trade mark or patent. I love the way HHJ Birss QC handles the PCC, he is indeed making it what it should be (like any other County Court) public-friendly and not an exclusive club for Trade Mark/Patent Lawyers!

If an individual cannot afford instructing an IP lawyer, then so be it, well, that's evidence that there is need for pro bono work in IP.

Hastings Guise said...

My biggest frustration in dealing with litigants in person (or in some cases parties who are not so well represented) is that they so frequently have a very overstated understanding of the strengths of their case.

Clearly this isn't a problem when you are actually fighting a matter because the weaknesses in their case will come out in the formal proceeding. However, it makes life really difficult when you are trying to negotiate a settlement.

In that situation you rely on the other party having an accurate assessment of the merits so that you can hack out the right deal. When the other party is incorrectly convinced that they will win in a case that is actually quite borderline, there is often no real prospect of getting to an acceptable settlement.

I have seen this in a number of different cases -- each time I find myself wishing that the other side would go and get some really good advice.

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