For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Wednesday, 26 December 2012

Better dead than Redd? Keep off our mark, says IP firm

This being the season for catching up on interesting cases that have so far escaped coverage, it's time to turn our attention to Redd Solicitors LLP v Red Legal Ltd and Martin Crighton [2012] EWPCC 54 PCC, a decision of Judge Birss QC in the Patents County Court, England and Wales, from last Tuesday, 18 December.  There is some legal interest in this decision, but its real interest lies in the fact that the claimant is a fairly robust firm of intellectual property specialists (including, the Kat modestly notes, some of his friends and readers of this very weblog) -- not the best people with whom to pick a fight on issues of intellectual property law, one wold have thought.

Red -- but not,
it seems, legal ...
The claimant, a firm of solicitors trading under the name Redd Solicitors LLP, specialised in intellectual property work -- though it did also handle other commercial work. Redd was also the proprietor of a Community trade mark for the word REDD in respect of "legal services", registered in 2005. In 2011, following the settlement of a legal dispute with another firm of solicitors, it also became the proud owner of a 2010 application for a subsequently-registered United Kingdom registered mark for the word RED.   Without being aware of any of this, in 2009, a firm of licensed conveyancers was set up under the name "Red Legal Ltd", with Mr Crighton as its director.

Redd saw red and sued Red for trade mark infringement; Red denied infringement of the CTM, argued that they were entitled to use the "own name" defence provided by the Trade Marks Act 1994, s 11(2) and sought the partial revocation of the CTM on the ground that Redd only practised in a single area of law and should be revoked for all the areas of law in which it didn't practise. If Redd's marks couldn't be revoked, they should at least be shaved down so as to exclude residential conveyancing.  Regarding the UK mark for the word RED, Red Legal conceded that there was a likelihood of confusion but argued that the mark was invalid: since Red Legal had been trading since 2009 and the RED application was filed a year later, that was a mark the use of which could be prevented by Red Legal's earlier unregistered mark under s 5(4) of the 1994 Act. What's more, since Redd took the mark over but never intended to use it, the registration was invalid under s 3(6).

Judge Birss QC had no difficulty finding for Redd and in holding both Red Legal and Mr Crighton liable, though he took a fair bit of space in order to do so: the judgment occupies an impressive 134 paragraphs -- most of which concerned the Community trade mark.

Starting with partial revocation, Judge Birss considered that the tribunal's first task was to find as a fact whether the goods or services for which the trade mark had been genuinely used during the relevant period. In doing so, it had to arrive at a fair specification for the services having regard to the use made, but it was not constrained by the existing wording of the specification. Having done this, the tribunal should strike a fair three-way balance between the respective interests of the proprietor, other traders and the public: how would the average consumer fairly describe the goods or services in question? That of course would depend on the nature of the goods, the circumstances of the trade and the breadth of the use proved.

In this instance the vast majority of clients came to Redd as a result of the firm's reputation for intellectual property law expertise enjoyed by the individuals working in the firm. However, Redd did do other client work that had nothing to do with intellectual property. Accordingly Redd had a credible reason, from a marketing point of view, to call itself as an IP firm and not emphasise its other work -- but that did not mean that "services relating to intellectual property rights" was a fair description of the totality of its work. Given the range of services offered by Redd, a fair description was "legal services".

It was plain that Redd had never offered residential conveyancing services -- nor did it plan to do so. But was that a sufficient basis on which to carve out residential conveyancing from the specification? No, said the judge. An important part of the reason that "legal services" was a fair description was because of the nature of such services: they were many and varied, and would vary considerably from time to time. Accordingly it would be unfair to engineer a carve-out for conveyancing services.

So what about infringement? Here the services were the same, the parties' respective indicia were conceptually close and, in the context of legal services, practically aurally identical. Although consumers tend to select their legal services with care, and neither the colour red nor the word itself possessed a high degree of distinctiveness, that was insufficient to eliminate a likelihood of confusion. The use of "Red Legal" therefore infringed Redd's Community trade mark.

What about the "own name" defence? Judge Birss QC was not impressed.  While there was no evidence of actual harm suffered by Redd, the defendants had opted for a corporate name for a new business which conflicted with an existing trade mark on the trade mark register; "Red" was not the name of anyone connected with the defendants, and they didn't draw the attention of the public to the fact that they were a firm of licensed conveyancers rather than real solicitors.  Had they taken the trouble to find out whether the name was free before they chose it, they would certainly have found Redd already there.  Accordingly the use of "Red Legal" was not an example of fair competition, having regard to the trade mark owner's legitimate interests.

The challenge to the UK registration for the RED trade mark could not be sustained: The earlier use on which Red Legal relied was itself an infringing use.  However, somewhat curiously, Red Legal did have a defence under s 11(3) of the 1994 Act in respect of its earlier local use of its name in the vicinity of the East Midlands town of Northampton (population 212,500).

The IPKat, who enjoyed reading this decision, wonders if anyone is keeping a list of trade mark infringement cases in which the defence of "I'm only using my own name", so often raised, has ever succeeded: if such a list exists, it must be a pretty short one, even if one includes passing-off actions and, in civil law jurisdictions, actions for unfair competition.

Merpel wonders why the colour and the concept "red", however you spell them, are so attractive to firms providing legal services.

Seeing Red here
Red Panda here
Red Death here
Better Red than Dead here
Better Dead than Red here

2 comments:

Anonymous said...

I don't know if this is relevant to kat's question, but it explains why the word 'red' is prominent in language: http://www.prospectmagazine.co.uk/magazine/riddled-with-irregularity/

Hans Sachs said...

I fear that Judge Birss, who many of us greatly admire, is in danger of becoming overly specialized and typecast as “The Red Judge”. After all, it was he who penned “The Red Bus” decision. And all in the same year.

Some may begin to wonder whether his jurisprudence is becoming redolent of a certain obsession with a certain colour.

He is apparently quite ready to protect the colour red. Could it be that any future defendant in any case involving the colour red would begin to think about asking Judge Birss to recuse himself?

My comments should not be read as being critical. Indeed, it should also be noted that Judge Birss is a very, very “cool” judge, although Apple may not readily agree after the Samsung matter. Maybe Apple should have come out with a rectangular red tablet.

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