Anthropomorphised mandrill? No, fire drill ...; in defence of France

Well done, Lawtel, for digging up this little gem from the Chancery Division, England and Wales, way back last April: it's a ruling by Mr Justice David Richards in Red Dot Technologies Ltd v Apollo Fire Detectors Ltd [2007] EWHC 1166 (Ch), not yet available on BAILII.

This was an application by Red Dot for an interim injunction to stop Apollo publishing, distributing or using a chart it had produced for the purpose of comparative advertising. Both businesses made fire alarm systems, Red Dot doing so under its UK trade mark RAFIKI. Apollo's chart, comparing its products with RAFIKI products, sought to show that it had a wider product range than Red Dot did. Red Dot sued for trade mark infringement, without going into specifics, and applied for interim relief to stop the publication, distribution or use of the chart. Red Dot also objected that, since the chart was misleading, it did not comply with the requirements of Misleading Advertising Directive 84/450, on which basis no defence would be available to Apollo under s.10(6) of the Trade Marks Act 1994 (which basically permits otherwise infringing acts if they constitute honest commercial practices. Apollo resisted the application and said they shouldn't be muzzled: the conventional test for deciding on interim injunctive relief - was there a seriously arguable case - was displaced by the Human Rights Act 1998, since the grant of an injunction would affect its right of freedom of expression under the European Convention on Human Rights 1950 Article 10.

David Richards J agreed with Apollo and dismissed the application for interim relief. In his view

* this case was a freedom of expression issue: comparative advertising was a form of expression that, if fair and not misleading, was in the public interest.

* in reality any comparative advertisement would be impossible if Apollo couldn't use Red Dot's trade mark.

* Red Dot had argued that all the court had to do was to apply a test of whether Red Dot was more likely than not to succeed at trial. But this was what the full trial was for: there wasn't time to decide that issue till the trial itself.

Left: where, the IPKat wonders, did Red Dot get the name RAFIKI from?

* until the ECJ gives its ruling in the O2 reference (see IPKat post here), it couldn't be said whether Red Dot had a case under the Trade Marks Act 1994, s.10(1) [same mark, same goods]. There was, however, a sufficient likelihood that Red Dot would establish that s.10(3) of the same Act (dilution/tarnishment) merited a further consideration of the application for an interim injunction.

* while the balance of prejudice between the two sides was pretty even, the facts that (i) the chart was already in use and, more importantly, (ii) freedom of expression was threatened meant that interim relief would be unjustified in this instance.

The IPKat thinks this is absolutely right. If the comparison is fair, it would be wrong to ban it either before trial or after it. If it isn't, the new and generous damages provisions of the IP Enforcement Directive 2004/48 should do the trick. If that doesn't work, doesn't anyone ever order an early trial any more? Merpel says, let's not forget the "advertising" remedy under the Enforcement Directive: can it be adapted to publish not only the fact of a defendant's liability but also the correction of any misleading comparisons?


The IPKat's friend Richard Milchior (Granrut, Paris) is too honourable man to allow any slur upon the integrity of his beautiful country's legal system to stand unchallenged. In this post yesterday Merpel said:

"France is (allegedly) xenophobic and (reputedly) a tough jurisdiction for foreign defendants while Microsoft is (allegedly) evil and (reputedly) deserving of a good kicking at national level to match the kicking it's received from the European Commission".

Says Richard:

"The last issue of the magazine of INPI the French PTO (PIBD dated May 15) publishes seven French trade mark decisions, which are the latest and most important ones. Three of them are from the French Supreme court (Cour de Cassation).

One decides in favour of an English company (Bach Flower Remedies) against French entities; another one, in an exhaustion of rights issue, decides in favour of the shoe company Vans against Auchan (the French equivalent of Tesco). A decision of the Paris Court of Appeal (4th Chamber), the chamber dealing with IP cases, decides in favour of Hasbro (a US company) against a French company. An appeal decision following an opposition procedure was decided in favour of the French party against the German Company Douglas Cosmetic. Finally the Paris Court of First instance decided in favour of Hugo Boss against a French person. The other cases were between French parties.

This is not totally sufficient from a statistical point of view, but I wonder what result could be found if you try to do the same exercise in other countries".

This likes a good challenge for some bright young lawyers to take on. IPKat co-blogger Jeremy did some unpublished 'counting cases' research in 1999 which suggested that French litigants did a little better than the norm for all parties in cases in which they were pitted against foreigners, while in Italy foreign litigants did correspondingly better than their Italian counterparts. The database of available cases was small and, in any case, no valuable conclusions can be drawn without also looking at the nature of the cases (eg would the result have been predictably the same if the nationalities were reversed?). Merpel adds: while Richard has come forward to defend the French, no-one has come forward to defend the Commission ...