Supreme folly? No muesli mix-up likely in the world where rabbits reign

Those whom the gods wish to punish, they first bless with a trade mark that should never, repeat NEVER, have been granted.  If you ever doubted that this is true, consider the episode related below. This is the tale of a business that had the good fortune to get a bunch of trade marks registered which either consisted of or prominently displayed the prima facie unregistrable word "supreme" -- and then they had the misfortune, or was it hubris, to bring proceedings against a defendant which wasn't using the word as a trade mark and which had been using it for some 20 years.  The case is Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), yet another blockbuster judgment from Mr Justice Arnold in the High Court, Chancery Division, for England and Wales.  As an aside, this judgment was delivered on 12 February 2015 -- a mere ten days after the five-day trial concluded. Considering that the judgment runs to 208 paragraphs, deals with five separate trade marks, reviews several decades of marketing history and cites over 60 earlier cases, one can only gasp at the man's astonishing level of productivity [Merpel wonders if it actually takes longer for her to read Arnold J's judgments than it takes him to cut-and-paste write them].

In short, Supreme Petfoods had registered Community and UK trade marks between 2003 and 2007 which either consisted of the word SUPREME or contained it within a figurative setting (referred to as the "stylised mark" (left) and the "ribbon mark" (above, right).  Supreme Petfoods had used the word "supreme" as early as 1990, its most successful product being a muesli mix for rabbits which it marketed under the Russel Rabbit brand (described as Supreme Petfood's "flagship" product). Between 1992 and 1998 there followed a range of muesli products for guinea pigs, hamsters, chinchillas, rats, ferrets and gerbils, each being given a character brand name: Gerty Guinea Pig, Harry Hamster, Charlie Chincilla, Reggie Rat, Frankie Ferret and Gerri Gerbil. All were sold in packaging similar to that of Russel Rabbit, but with different cartoons for each character and different background colours. These products underwent a number of packaging redesigns in which the word “supreme” and later the trade marks were displayed in various ways, described in full in the judgment.

Family business Henry Bell acquired in 2009 the business of Grain Harvesters, trading as My Pet Foods and selling pet foods under the “Mr Johnson’s” brand name, which Bell had been making for them since 2007. The Mr Johnson’s brand was first developed by another company some time in the early 1990s. The company that owned it was selling a product under a banner reading SUPREME RABBIT MIX. In October 1994 Supreme Petfoods asked that business either to delete the word SUPREME from the banner or to drop the banner, but did not ask it to cease use of the word “Supreme”. In compliance with this request, the banner was dropped. The word “Supreme” was however used on various product packagings between 1995 and 2004 when the business was sold to Grain Harvesters. At this stage, as part of a rationalisation of overlapping products, a product called MY SUPER GUINEA PIG was re-named SUPREME GUINEA PIG and sold under the “Mr Johnson’s” brand. Supreme Petfoods' attorneys again wrote to object, conceded that there had been “some degree of co-existence”, but stated that their client was concerned that “deviation from previous usage of Mr Johnson’s SUPREME which shows the word SUPREME with added prominence may result in confusion arising”. In February 2006 Grain Harvesters’ trade mark attorneys responded by enclosing a sample of packaging, stating that the use of SUPREME had been this way on the packaging since the early 1990s and saying that their client had made no changes from what had been done in the past. No further action was taken by Supreme Petfoods.

After Henry Bell acquired Grain Harvesters it decided to place the entire range of food for small animals under range under the Mr Johnson’s brand, this being the strongest brand of those it now held, and because its top performing product was already branded “Mr Johnson’s SUPREME RABBIT”. By 2012 Henry Bell had redesigned its packaging in which it continued to use the word “Supreme”. Supreme Petfoods objected to the use by Henry Bell of the word SUPREME on its product packaging in the slogan “Mr Johnson’s Supreme Rabbit Mix” (above, right). Supreme Petfoods then sued for trade mark infringement and passing off. Henry Bell denied infringing and counterclaimed for a declaration of invalidity on the basis that the marks were either descriptive or devoid of distinctive character.

Arnold J dismissed all Supreme Petfoods' claims, declared the UK word mark SUPREME invalid as being descriptive or laudatory and declared the other marks invalid, in each case for everything except "small animal food" -- where trade customers would recognise the marks even if ordinary consumers didn't. He added that the marks were not in any event infringed and, even if they had been, there was a perfectly good defence that Henry Bell was using the term "supreme" as a description of the quality of its goods. Oh yes, and there was also honest concurrent use. Among the many things he said are these:

* Citing Case C-145/05 Levi Strauss & Co v Casucci SpA [2006] ECR I-3703. he observed that the Court of Justice of the European Union (CJEU) had held that the question of trade mark infringement fell to be assessed as at the operative date, this being the date from which the use of the sign began. However, that could prove difficult where a defendant has been using the sign for some time, or where circumstances have changed during its use. This operative date could not however differ depending on whether the claim was made for infringement under Article 5(1)(a) of the Trade Mark Directive (same mark, same goods) or Article 5(1)(b) (similar mark, same goods and a likelihood of confusion); nor could that date be earlier than the date from which the trade mark registration had effect. In this case, the relevant date could not be later than the date of Henry Bell’s launch of its repackaged product, by which time Supreme Petfoods' word mark had acquired a slender degree of distinctive character.

* It was unclear whether, in establishing whether the alleged infringement had affected one of the functions of a trade mark, it was for the trade mark proprietor or for the defendant to bear the burden of proof, this being a matter which the CJEU would ultimately have to determine. However, for the purposes of the case before it, the court would proceed on the basis that it was for the defendant to bear the burden of proof of showing that it had not affected the functions of the allegedly infringed trade marks. Henry Bell did this by establishing that it had not used the sign SUPREME as a trade mark at all.

* There was honest concurrent use by Henry Bell of the word "supreme" for over 20 years without causing confusion; this demonstrated that the use had no adverse effect on any function of the word mark -- and it didn't infringe the stylised and ribbon mark registrations.  If there had been any likelihood of confusion, it would have been negated by the context, since Henry Bell’s use of the word “supreme” was always subsidiary to the prominent and well-known “MR JOHNSON'S” brand.

* The use of the sign “supreme” was commonplace in the animal food sector [para 43 contains a list of 35 examples, of which this Kat's favourites are Wuffitmix Supreme Kibble and Country Wide Hamster Supreme -- though the thought of a country-wide hamster is quite daunting].

* Even if the marks had been infringed, Henry Bell could rely on a defence under Article 6(1) of the Trade Mark Directive since it was using the sign as an indication of the quality of its feed. Even if the word could be perceived by the average consumer as being partly distinctive, the fact remained that it was a common descriptive or at least laudatory epithet.

The last word belongs to Mr Justice Arnold, though it's really the first word since he said it in para 1:

It ought to be possible for such a dispute to be resolved without great legal difficulty or expense. Such is the current state of European trade mark law, however, that instead it has thrown up a considerable number of legal and factual issues, although the number was reduced as a result of sensible concessions made by both sides during closing submissions [in other words, this judgment could have been even longer ...]. As a result, I fear that the costs will have been out of all proportion to what is at stake.

Indeed, says this Kat. In this litigation funded by rabbit food, the costs will certainly not be chicken feed.

Later today this weblog will be hosting a comment on this decision from Katfriend Tim Behean, so watch this space!