After Henry Bell acquired Grain Harvesters it decided to place the entire range of food for small animals under range under the Mr Johnson’s brand, this being the strongest brand of those it now held, and because its top performing product was already branded “Mr Johnson’s SUPREME RABBIT”. By 2012 Henry Bell had redesigned its packaging in which it continued to use the word “Supreme”. Supreme Petfoods objected to the use by Henry Bell of the word SUPREME on its product packaging in the slogan “Mr Johnson’s Supreme Rabbit Mix” (above, right). Supreme Petfoods then sued for trade mark infringement and passing off. Henry Bell denied infringing and counterclaimed for a declaration of invalidity on the basis that the marks were either descriptive or devoid of distinctive character.
Arnold J dismissed all Supreme Petfoods' claims, declared the UK word mark SUPREME invalid as being descriptive or laudatory and declared the other marks invalid, in each case for everything except "small animal food" -- where trade customers would recognise the marks even if ordinary consumers didn't. He added that the marks were not in any event infringed and, even if they had been, there was a perfectly good defence that Henry Bell was using the term "supreme" as a description of the quality of its goods. Oh yes, and there was also honest concurrent use. Among the many things he said are these:
* Citing Case C-145/05 Levi Strauss & Co v Casucci SpA  ECR I-3703. he observed that the Court of Justice of the European Union (CJEU) had held that the question of trade mark infringement fell to be assessed as at the operative date, this being the date from which the use of the sign began. However, that could prove difficult where a defendant has been using the sign for some time, or where circumstances have changed during its use. This operative date could not however differ depending on whether the claim was made for infringement under Article 5(1)(a) of the Trade Mark Directive (same mark, same goods) or Article 5(1)(b) (similar mark, same goods and a likelihood of confusion); nor could that date be earlier than the date from which the trade mark registration had effect. In this case, the relevant date could not be later than the date of Henry Bell’s launch of its repackaged product, by which time Supreme Petfoods' word mark had acquired a slender degree of distinctive character.
* It was unclear whether, in establishing whether the alleged infringement had affected one of the functions of a trade mark, it was for the trade mark proprietor or for the defendant to bear the burden of proof, this being a matter which the CJEU would ultimately have to determine. However, for the purposes of the case before it, the court would proceed on the basis that it was for the defendant to bear the burden of proof of showing that it had not affected the functions of the allegedly infringed trade marks. Henry Bell did this by establishing that it had not used the sign SUPREME as a trade mark at all.
* There was honest concurrent use by Henry Bell of the word "supreme" for over 20 years without causing confusion; this demonstrated that the use had no adverse effect on any function of the word mark -- and it didn't infringe the stylised and ribbon mark registrations. If there had been any likelihood of confusion, it would have been negated by the context, since Henry Bell’s use of the word “supreme” was always subsidiary to the prominent and well-known “MR JOHNSON'S” brand.
* The use of the sign “supreme” was commonplace in the animal food sector [para 43 contains a list of 35 examples, of which this Kat's favourites are Wuffitmix Supreme Kibble and Country Wide Hamster Supreme -- though the thought of a country-wide hamster is quite daunting].
* Even if the marks had been infringed, Henry Bell could rely on a defence under Article 6(1) of the Trade Mark Directive since it was using the sign as an indication of the quality of its feed. Even if the word could be perceived by the average consumer as being partly distinctive, the fact remained that it was a common descriptive or at least laudatory epithet.
The last word belongs to Mr Justice Arnold, though it's really the first word since he said it in para 1:
It ought to be possible for such a dispute to be resolved without great legal difficulty or expense. Such is the current state of European trade mark law, however, that instead it has thrown up a considerable number of legal and factual issues, although the number was reduced as a result of sensible concessions made by both sides during closing submissions [in other words, this judgment could have been even longer ...]. As a result, I fear that the costs will have been out of all proportion to what is at stake.Indeed, says this Kat. In this litigation funded by rabbit food, the costs will certainly not be chicken feed.
Later today this weblog will be hosting a comment on this decision from Katfriend Tim Behean, so watch this space!