NO INJUNCTION: IT'S PLAIN HORSE SENSE

Subscription-only service Lawtel reports that, on Tuesday, Mr Justice Mann reminded would-be litigants that it's not enough to show that the public knows your brand name: if you want to protect yourself, you either need a good portfolio of trade marks or, if you're relying on an unregistered right, you'll want some pretty good evidence of a likelihood of confusion.

In Biotal v Dodson & Harrell Ltd Biotal sought interim injunctive relief, to stop Dodson & Harrell (D&H) using its EquiGold brand name. Biotal had made and sold EQUINE GOLD, usually preceded by the name BIOTAL, as a product with quasi-medicinal properties: the idea was that it should be added to horse feed in small quantities. D&H plpanned to make and sell EquiGold , a horse feed product to be consumed in medium sized quantities. Biotal argued that, in using EquiGold for its products, D&H would be passing off its products as those of Biotal's.

Mann J dismissed the application. Even though Biotal had established that the term EQUINE GOLD, even when taken without the word BIOTAL, had acquired goodwill, D&H were not infringing any rights in it. Biotal had chosen to use words that had an accepted descriptive English meaning, while D&H picked a composite made-up word. The differences between the two were sufficiently significant to show that the products were different. Having considered the context in which the products were sold, as well as their get-up (EquiGold was sold in tubs, EquiGold in large green sacks) it was clear the two products were different. Also EQUINE GOLD was added to other feed and was basically medicinal, while D&H's was given to a horse in meal-sized quantities. All these differences reinforced the impression that anyone who kept horses would be able to distinguish between the medicinal type product, EQUINE GOLD, and the feed type product, EquiGold . Since the passing off claim was so weak, no injunction would be granted.

The IPKat thinks this is right. Even if Biotal's passing-off claim were stronger, it would be surprising if on the American Cyanamid principle interim would be granted, since the products were not substitutes for each other and records of pre-trial sales of EquiGold could be easaily maintained.

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