From swinging 60s to swing-tags: genuine use of the TOMMY NUTTER mark

"Rebel" alludes to the supply by Crombie
of cloth to the Confederate Army in the
US Civil Law

When this Kat was a small kitten, the word "nutter" might have been thought a relatively unpropitious candidate for registration as a trade mark and for promotion as a brand.  Essentially, it suggested a person, possibly of psychopathic tendencies, whose intellectual faculties had strayed from the norm.  It was also, however, the perfectly respectable surname of Tommy Nutter, a master tailor and 1960s icon (he dressed three of the four Beatles for their famous Abbey Road album cover shot). It is his name that is at the heart of the litigation in J and J Crombie Ltd v Nutter (Holdings) Ltd [2013] EWHC 3459 (Ch), a Chancery Division, England and Wales, decision of Mrs Justice Asplin dating back to 11 November. It all started back on 5 October 2011, when Nutter (Holdings), referred to below simply as 'Nutter', who applied to register the word mark TOMMY NUTTER as a UK trade mark for "clothing, footwear, headgear" in Class 25, also sought to revoke Crombie's TOMMY NUTTER UK-registered word mark for non-use over the requisite period of five years following its date of registration for goods which were also in Class 25. The highly experienced Allan James, for the Registry, concluded that there had indeed been no genuine use of the TOMMY NUTTER trade mark by Crombie during the five year period ending 22 September 2011 and/or 4 October 2011 and revoked the mark.

Crombie (founded 1805: patrons included King George VI, Sir Winston Churchill, Dwight D. Eisenhower and Cary Grant) appealed, arguing that it had shown genuine use of the registration in question and also maintaining that it would be able to prevent Nutter using the TOMMY NUTTER mark through the law of passing off -- but to no avail.  According to Asplin J:

* It was settled law that it was necessary to take into account all the relevant facts and circumstances in determining whether there was a real commercial exploitation of a mark. For the purposes of the law of passing off, it was necessary for the goodwill or reputation to attach to the goods or services supplied by the claimant in the minds of the purchasing public as a result of the brand name under which the goods were offered to the public, so that the brand name was recognised by the public as distinctive specifically of the claimant’s goods and none other. Further, the use of the brand name had to a material misrepresentation if the use of the later mark were to fall foul of the earlier one.

* On the facts, Allan James's approach with regard to the relevant background had not been wrong in principle; nor had his conclusions been wrong in law or fact. There was no evidence that a substantial proportion of the relevant public would be deceived or that any misrepresentation by Nutter would be material in respect of the use of the mark it had applied for. Accordingly Allan James was right to reject Crombie's opposition.

* Allan James had had been right to revoke Crombie's trade mark for lack of genuine use of the mark in the UK in respect of the goods for which it was registered in the five years following the date of registration.

Says the Kat, it's worth taking a look at the evidence of use offered by Crombie. This consisted of the following:

• the sale of 46 waistcoats 
• the sale of 21 suits
• oral use of the mark as part of the sale process and at a handful of events
• publicity surrounding the possible sale of the brand prior to the date on which the application to revoke was made.

The evidential value of these items was complicated by the fact that, (i) in relation to the waistcoats, there was no allegation of use of the mark on swing tags or on the waistcoats themselves. At the point of sale the frontmost hanger bore the mark TOMMY NUTTER, and sales assistants used the name TOMMY NUTTER in selling the items. This, Crombie argued, was sufficient proof of genuine use, and (ii) in relation to suits, no direct evidence was available that the suits bore swing tags with the mark upon it in the relevant period (though there was evidence of use on swing tags after the relevant date). As to oral use of the name Tommy Nutter, cross-examination of Crombie’s witnesses highlighted a number of inconsistencies or reasons to believe that they sought to give evidence in such a way as to maximise the effect of the sales.

Such use as there was, commented Allan James, “reeked of tokenism” and would not pass muster as a credible basis for a “passing-off” claim, either. The “bad faith” claim also fell away.

Sir Winston Churchill: wore
Crombie but wasn't a nutter ...

Crombie appealed the decision insofar as it related to the decisions on the “genuine use” and “passing-off” cases. Rejecting the appeal, Mrs Justice Asplin concluded that the Hearing Officer was entitled to find that the use constituted token use, and he had not simply applied a “de minimis” rule. While the waistcoats were expensive, they were not so expensive as to render the Hearing Officer incorrect in his finding that the use was insufficient to create or maintain a market in the goods. He was also entitled to conclude that the mark did not feature on the suits during the relevant period. Even after the relevant period the suits were hung on CROMBIE hangers, and so it was not unreasonable to conclude that they were not labelled or tagged as TOMMY NUTTER within the relevant period.

Finally, the Hearing Officer was correct in concluding that the public relations efforts to promote the fact that the mark was available for purchase or licence was not used to create or maintain a market for the relevant goods.

No cat imagery. If you search
'cat' plus 'nutter', the search
engine assumes you mean 'neuter'

Katfriend Aaron Wood (Swindell & Pearson Ltd), who acted for Nutter, adds that this case demonstrates the difficulty in succeeding where an appeal is by way of review of the hearing officer's decision and not a retrial. In particular, evidence filed at first instance must be “best” evidence and must stand up to scrutiny, and one must be prepared for witnesses to be called and cross-examined. In this case the sales figures were exhibited by Crombie’s solicitors (despite the fact that Crombie provided five witness statements from employees regarding other elements); the subsequent exposure of errors in those sales figures appears to have been damaging, as was the exposure of exaggeration in another witness and an admission from the witness giving evidence on the tags that she was only involved in garment design and could not confirm whether the tag was used in the relevant period. It may also have been unhelpful that Crombie’s main witness sought leave to introduce fresh evidence on appeal -- this being a witness statement correcting an earlier witness statement in light of numerous errors and inaccuracies exposed in cross-examination.

Merpel hears distant rumblings of a rumour that there may just be an appeal ...