An autumnal efflorescence: July's roses in late October

How many pints of beer does a Kat

have to drink before this symbol

even begins to look like a rose?

While the roses in his garden are gently disintegrating as the days shorten and the weather becomes less clement, this Kat thought he might take solace from a brief browse through his archive of half-written blogposts.  Might any items still be salvaged for his readership before their bloom fades completely away? It was in the course of this nostalgic meander through the warm and sunny days of July that he stumbled on a case which is actually quite interesting, and even important if you like beer and roses: Samuel Smith Old Brewery v Philip Lee (trading as Cropton Brewery) [2011] EWHC 1879 (Ch), a ruling by Mr Justice Arnold, Chancery Division, England and Wales, 22 July 2011.

Yorkshire-based Samuel Smith, one of the oldest English breweries still in existence, registered as a trade mark a stylised white rose device (above, right), this being both distinctive of the brewery and an allusion to its strong connection with Yorkshire, the white rose being that county's ancient emblem.  A far more recent Yorkshire-based brewery, Cropton, subsequently agreed to supply a beer called Yorkshire Bitter to Marks & Spencer (M&S). This beer's label, which M&S provided, bore the words 'Yorkshire Bitter' printed on white on a red roundel which surrounded a slightly stylised white rose emblem with red accents (below, left).

When Samuel Smith spotted the Yorkshire Bitter it sent M&S on 10 December 2007 a letter before action to M&S alleging trade mark infringement and passing off.  The letter was not copied to Cropton; nor did M&S inform even tell Cropton about the complaint at that time. In June 2009, Samuel Smith sued Cropton too, alleging both trade mark infringement and passing off in respect of another of its beers, Yorkshire Warrior (below, right). However, it wasn't until September 2009, after Samuel Smith's solicitor's sent Cropton's solicitors some photos of the products it was complaining about, that it was apparent that the claim related both to Yorkshire Warrior and to Yorkshire Bitter.  A month later, in October 2009, the Ministry of Defence -- which was responsible for the IP rights in the 'white rose' cap badge of the Yorkshire Regiment-- refused its informal blessing for Cropton's use of a white rose on its Yorkshire Warrier beer, out of respect for Samuel Smith's trade mark rights.

Still in October 2009 Cropton served a defence and counterclaim, alleging that Samuel Smith's letter before action to M&S of 10 December 2007 was an unjustified threat of trade mark infringement proceedings which was actionable under the Trade Marks Act 1994, s.21. Samuel Smith admitted the existence of letter but denied that it was an actionable threat: since it was not addressed to Cropton, the latter was not a "person aggrieved" under s.21 of the Act. Samuel Smith's solicitors then sent M&S a further letter on 7 July 2010, inter alia summarising the nature of its action against Cropton and unsuccessfully inviting discussion in order to settle the disputes.

In these proceedings the court was required to consider the following: 

• did Cropton infringe the trade mark by use of the Yorkshire Bitter label?;

• did Cropton infringe the trade mark by use of the Yorkshire Warrior label?;
• did Cropton have a defence in the Yorkshire Warrior claim in that it had acted in accordance with honest practices in industrial or commercial matters?
•  did either of Samuel Smith's letters to M&S constitute unjustified and actionable threats of trade mark infringement proceedings?

 Picking his way carefully through the facts and the issues, Arnold J reached the following conclusions:

Was there a trade mark infringement through likelihood of confusion?

After summarising the conventional Euro-wisdom on the assessment of the respective marks and their comparison, it had to be observed that there was an important difference between the comparison of marks for registration purposes and the same exercise in the context of infringement: registration requires consideration of notional fair use of the mark applied for, while infringement demands consideration of the actual use by the alleged infringer.

So far as Yorkshire Bitter was concerned, while the identity of the goods and the distinctive character of Samuel Smith's trade mark favoured a finding of a likelihood of confusion, the differences between the respective marks, the remainder of the allegedly sign and the identification of Cropton as the producer on the front of the label all militated against it. What's more, Samuel Smith had been dilatory in pursuing M&S and Cropton, which suggested that it had not considered that there had been a real likelihood of confusion: Yorkshire Bitter had only been included in the action because Samuel Smith had thought it would look odd to pursue Yorkshire Warrior without pursuing Yorkshire Bitter too. The evidence of experience [Merpel says, 'evidence of experience' is the judge's own expression: see para.105. She does not recall these words appearing in any other judgment and wouldd like to know a little more about them, please!] strongly suggested that there had been no likelihood of confusion -- so there wasn't.

As for Yorkshire Warrior, the identity of the goods and the distinctive character of the trade mark again favoured a likelihood of confusion: the allegedly infringing white rose device was both closer to the trade mark and was more dominant than in the case of Yorkshire Bitter. Even in the absence of evidence of actual confusion, it was more difficult to state with confidence that there was no likelihood of confusion [This reminds Merpel of the formula of "it cannot be excluded that" there was no likelihood of confusion which some European jurisdictions prefer]. Although the majority of consumers would not be confused, there was an overal likelihood that some consumers would be confused into believing either that Yorkshire Warrior was a Samuel Smith product or that it had some other connection with the firm.

Had Cropton acted in accordance with honest practices in industrial or commercial matters?

After extensively reviewing the principles to be applied when reaching a conclusion on this issue, Arnold J observed that this was the first time a British court had to consider the issue of use in accordance with honest practices in industrial or commercial matters under Article 6(1)(b) of the Directive -- not that this would make any difference to the outcome of this dispute.

As for Yorkshire Bitter, Cropton's use of the white rose element was indeed in accordance with honest practices in industrial and commercial matters. However, regarding Yorkshire Warrior, Cropton's initially honest commercial use of the white rose element cease to be so after October 2009.

Threats

 Cropton was not a person aggrieved by the December 2007 threats letter since it neither knew of the letter nor suffered any loss in result of it.  The second letter was not a threat, but Cropton was a "person aggrieved". As the judge explained at para.161:

"If, contrary to the conclusion I have just reached, the second letter was a threat, then in my judgment Cropton Brewery is "a person aggrieved" by it. The letter appears to have led to Marks & Spencer making a change to the design of the Yorkshire Bitter label, with consequent cost to Cropton Brewery because it was forced to write off its stock of old labels. It also led to negotiations between Samuel Smith and Marks & Spencer which resulted in the settlement agreement, which prevents Marks & Spencer from selling Yorkshire Bitter under the old label. In these circumstances I consider that there is evidence that Cropton Brewery has suffered more than minimal damage as a result of the second letter".

The IPKat thanks Denise McFarland (3 New Square: Denise appeared for Samuel Smith) for some additional information: having secured injunctions for both passing off and trade mark infringment, plus an account of profits, Samuel Smith stated in open court that whatever payment was made to them under the account of profits would be donated by them to the Help For Heroes charity.

Why the easiest way to order White Roses from Marks & Spencer is to search "Interflora" here
Beer for roses here