In order to establish a claim in passing off, a Claimant requires to show they have the necessary goodwill or reputation, that there has been a misrepresentation to the public (which may or may not be intentional) which leads the public to believe that the goods or services offered are those of the Claimant and that damage has been caused. The Trade Marks Act 1994 provides the owner of a mark with the right to prevent unauthorised third parties from using any sign which because of its similarity confusion may be caused to the public.
In the case of Fine & Country Ltd and others –v- Okotoks Ltd and others , the Claimant, F&C had since 2001 licensed to independent local estate agencies the use of the name “Fine & Country”. The name was used extensively in marketing materials, advertisements, ‘for sale’ boards and office signage. F&C provided a marketing umbrella to which a significant number of independent estate agencies were licensees. “Fine & Country” had been registered by the Claimants as a UK Trade Mark and a Community Trade Mark in the European Union.
The Defendants had since 2009 operated a number of national estate agencies under the name “Fine”. Their logo was frequently accompanied by the strap line “selling fine homes throughout the country”. The Claimants issued Court proceedings against the Defendants for passing off and trade mark infringement.
The High Court found that the use of the word “Fine” for estate agency services amounted to passing off and trademark infringement. The Defendants appealed. The Court of Appeal upheld the decision of the High Court. The Claimants’ mark enjoyed a reputation and the Defendants’ use of the “Fine” mark took unfair advantage of that reputation.
Interestingly, the Court of Appeal rejected the Defendants’ argument that the Claimants had no right to pursue the action as the licensor. The Court took the view that the goodwill was attributable to the licensor and the claim was therefore allowed. The ability of F&C to attract a licence fee was itself goodwill and if the brand was damaged then the ramification of that would be damage caused to the ability to generate licence fees.
A trade mark should not be registered if it is devoid of any distinctive character or contains references which refer to the nature, quality, quantity or purpose of the goods or services that the mark covers in the trade in which it operates. In any of those circumstances, any person can apply to invalidate a mark granted in breach of those provisions, unless an element of distinctiveness in the mark has been achieved since the time of its registration.
The Defendants had produced significant evidence to show that the terms “fine”, “finest” and “country” were used as descriptive terms by estate agents. They sought to argue that the “Fine and Country” mark was therefore descriptive and should be invalidated. Whilst the Court accepted that the terms were descriptive, it held that the registration of the mark was valid because the “Fine and Country” mark as a whole had developed a secondary meaning.
The Court found that the use of the name, font, capitalisation, underlining, use of gold, the strap line and the overall impression combined to establish a claim in passing off. The Court indicated that the use of the word “fine” itself may not have been sufficient to establish the claim in the absence of other factors.
In this case it was the combination of the similarities between the two marks and the use of the marketing slogan which led to a conclusion of passing off. Brand owners need to exercise caution so as not to cause confusion with the brands of their competitors when generating brands and marketing slogans.
Commercial Dispute Resolution Department
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