SMILING CHICKEN BEATS OFF ATTACKER

Last Wednesday in Dixy Fried Chickens (Euro) Ltd v Dixy Fried Chicken (Stratford) Ltd [2003] EWHC 2902 (Ch), Mr Justice Laddie overturned a Registry decision and affirmed the validity of the DIXY FRIED CHICKEN trade mark. What happened was that Dixy Euro registered, for chicken and chicken products in Class 29, a trade mark consisting of a line drawing of a cartoon-style smiling chicken's head and the words DIXY FRIED CHICKEN. Dixy Stratford, which also sold fast food, sought a declaration of invalidity, claiming it had traded under a DIXY FRIED CHICKEN mark for some time and that it had acquired a reputation in the market before Dixy Euro acquired any relevant reputation in it. The ground of revocation was that Dixy Euro’s use of its registered mark would amount to passing off, under the Trade Marks Act 1994, s. 5(4)(a). The Registrar declared the mark invalid and Dixy Euro appealed.

Laddie J reviewed the evidence and concluded that Dixy Stratford’s claim for revocation had not been made out. According to the learned judge, anyone attacking a validly registered trade mark had to prove, on a balance of probabilities, that he could have prevented the use of that mark by an action for passing off. This did not only mean evidence of use of the mark itself but evidence that the attacker's reputation extended to the goods for which the mark was registered. On the evidence, Dixy Stratford had failed to make out even a prima facie case of a likelihood of passing off and the attack on the registered trade mark failed.

The IPKat notes that trade marks, once granted, are presumed valid and remain so unless and until the contrary is proved. The best time for keeping a trade mark off the register is before it gets on to it. Weak attacks on registered marks

To see how Dixy Euro saw off the threat of DIXYLAND CHICKEN & RIBS click here
How to make fried chicken here, here and here