Trade Marks and Passing Off: Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd

The Inn Sign for the Beehive public house in  Grantham

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The Lincolnshire town of Grantham educated one of the world's greatest scientists and the first woman to be British prime minister (see "Frit" - Merck Sharp Dohme Corp v Teva Pharma BV 25 March 2012). It has a magnificent parish church and is home to Chantry Dance Company which is very special to me as you will see from the last video clip in Chantry Dance Company's Sandman and Dream Dance 10 May 2014 Terpsichore if you read that far. It has a pub called The Beehive with a real beehive for the pub sign (how's that for imaginative branding). Each Autumn it holds a science and arts festival in honour of Sir Isaac Newton called Gravity Fields (see Gravity Fields Festival - there's much more to Grantham than Mrs T 8 Aug 2014 East Midlands IP).

So you might think that the good people of Grantham would be very interested in intellectual property having contributed so much to science, branding and the arts - wouldn't you. Well, you'd be wrong.  When I put together a workshop on intellectual property law with speakers from the IP Office, Loven IP and our chambers as part of the Gravity Fields festival which I promoted relentlessly in East Midlands IP for over a month I had hardly any takers and had to pull it at the last minute to save my speakers wasted journeys.

Or would you be so wrong?  A Grantham firm has just helped to make some trade mark law. In Supreme Petfoods Ltd v Henry Bell &; Co (Grantham) Ltd  [2015] EWHC 256 (Ch) (12 Feb 2015) Supreme Petfoods Ltd of Ipswich sued Henry Bell & Co. of Grantham for trade mark infringement under s. 10 (1), (2) and (3) of the Trade Marks Act 1994, art 9 (1) (a), (b) and (c) of Council Regulation (EC) No 207/2009 of 26 February 2009on the Community trade mark ("CTM Regulation") and passing off. The marks relied upon were:

• UK registered trade mark no. 2345353 consisting of the word SUPREME registered as of 8 Oct 2003 in respect of (inter alia) "foodstuffs for animals; chews; meat and chocolate based animal treats; animal biscuits; animal litter; bird seed; animal bedding; … rabbit food" in Class 31 ("the UK Word Mark");
• UK registered trade mark no. 2454708 consisting of the stylised word shown below registered as of 5 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 
  ("the UK Stylised Word Mark");
• UK registered trade mark no. 2454707 consisting of the ribbon device shown below registered as of 5 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 
  ("the UK Ribbon Mark");
• CTM  No. 5874921 consisting of the stylised word shown above registered as of 4 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the Community Stylised Word Mark");
• CTM no 5875091 consisting of the ribbon device shown above registered as of 4 May 2007 in respect of (inter alia) "animal foodstuffs; supplements for animal foodstuffs; edible treats for animals; animal bedding and litter" in Class 31 ("the Community Ribbon Mark").

Supreme Petfoods complained of Henry Bell's use of the word "Supreme" in its packaging as in the following example:

The case came on before Mr Justice Arnold who made clear his view of the case in the first sentence of his judgment:

"In this case the Claimant ("Supreme Petfoods") seeks in essence to monopolise use of the word SUPREME as a trade mark for animal food."

From that moment onwards it became abundantly clear that the learned judge would throw out the claim. He concluded at paragraph [208] that:

"i) the UK Word Mark is invalidly registered save in relation to small animal food;
ii) the UK and Community Stylised Word Marks are invalidly registered save in relation to small animal food;
iii) the UK and Community Ribbon Marks are validly registered;
iv) Henry Bell has not infringed the UK Word Mark pursuant to Article 5(1)(a) of the Directive;
v) Henry Bell has not infringed the UK and Community Stylised Word Marks or UK and Community Ribbon Marks pursuant to Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation;
vi) Henry Bell has not infringed the UK and Community Ribbon Marks pursuant to Article 5(2) of the Directive/Article 9(1)(c) of the Regulation."
vii) even if it would otherwise have infringed, Henry Bell would have a defence under Article 6(1)(b) of the Directive/Article 12(b) of the Regulation; and
viii) Henry Bell has not committed passing off."

Between paragraphs [12] and [25] the judge traced the development of Supreme's brand. From paragraph [26] to [42] he traced the development of Henry Bell's business and its marketing. At paragraph [43] he considered the use of the word SUPREME by other animal feed manufacturers.

His lordship then reviewed art 16 (1) of TRIPS, the 11th recital and arts 3, 5 and 6 of the European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version replacing Directive 89/104/EEC) ("the Directive"). The judge explained at paragraph [48] that he had referred to TRIPS because:

"The Court of Justice of the European Union has repeatedly held that, in a field of intellectual property law where the European Union has legislated, such as trade marks, national courts must interpret both European and domestic legislation as far as possible in the light of the wording and purpose of relevant international agreements to which the EU is a party, and in particular TRIPS."

He observed at paragraph [50] that:

"It is settled law that many issues in European trade mark law fall to be assessed from the perspective of the "average consumer" of the relevant goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect"

adding  as Mr Justice Birss had pointed out in Hearst Holdings Inc v AVELA Inc [2014] EWHC 439 (Ch), [2014] FSR 36 at [60], that:

"The word 'average' denotes that the person is typical. The term 'average' does not denote some form of numerical mean, mode or median."

He decided that the average consumer, in this case, would be pet owners, that is to say, ordinary members of the public some of whom own rabbits and gerbils and others cats and dogs.

The judge considered art 3 (1) (b) of the Directive and Case C-265/09 OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG [2010] ECR I-8265 and art 3 (1) (c) of the Directive and Case C-51/10P Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-1541. He concluded that neither the UK Word Mark nor the UK or Community Stylised Trade Marks was inherently distinctive.  However, he thought that the UK and Community Ribbon Marks were inherently distinctive.  He then analysed evidence of Supreme's marketing and sales under the Stylized and Word Marks and concluded that Supreme may have acquired some distinctiveness in relation to food for small animals but not otherwise.   He, therefore, declared that the Word Mark and the UK and Community Stylised Marks were invalid save in relation to small animal feed.

In relation to the claims under s.10 (1) of the Act and art 9 (1) (a) of the CTM Regulation Mr Justice Arnold held at paragraph [83] that:

"The case law of the CJEU establishes that the proprietor of a trade mark can only succeed in a claim under Article 5(1)(a) of the Directive or Article 9(1)(a) of the Regulation if six conditions are satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trademark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect, or be liable to affect, one of the functions of the trade mark: see in particular Case C-206/01 Arsenal Football plc v Reed [2002] ECR I-10273 at [51], Case C-245/02 Anheuser-Busch Inc v Budejovicky Budvar np [2004] I-10989 at [59], Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-1017 at [18]-[22], Case C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 at [16], Case C-62/08 UDV North America Inc v Brandtraders NV [2009] ECR I-1279 at [42] and Case  C-487/07 L'Oréal SA v Bellure NV [2009] ECR I-5185 at [58]-[64]."

There was no dispute that the first 4 conditions had been satisfied.  As for the 5th and 6th conditions, the judge found at paragraph [165] that Henry Bell used the word SUPREME in a way that would be understood by the average consumer as being purely descriptive. Hence the sign has not been used as a trade mark at all.   That meant that the 5th condition was not satisfied.   As there had been no use of the sign as a trade mark it also meant that the 6th condition could not be satisfied.   Thus, the claims under s.10 (1) and art 9 (1) (a) failed.

As to the claim under s.10 (2) and art 9 (1) (b), the judge referred to his review of the law in Enterprise v Europcar, He said at paragraph [185]:

"For the purposes of its claim under Article 5(1)(b)/Article 9(1)(b), Supreme Petfoods relies upon the UK and Community Stylised Word Marks and the UK and Community Ribbon Marks I have considered the average consumer and the distinctive character of these Trade Marks above. I shall assume that Henry Bell has used the sign SUPREME in relation to its goods, which are identical goods to those covered by these Trade Marks. The sign is visually, aurally and conceptually identical to the SUPREME element of these Trade Marks, but there is no similarity with any of the graphical elements of these Trade Marks. In my judgment, there is no likelihood of confusion because there is no distinctive resemblance between the sign and the Trade Marks. The presence of the common non-distinctive element consisting of the word SUPREME is not enough for a likelihood of confusion. Furthermore, even if there might otherwise be a likelihood of confusion, the context of the use, which is always subsidiary to the prominent and well-known Mr Johnson's® branding, would suffice to negate such a likelihood."

He thus dismissed the claims under those heads.

On the claims under s.10 (3) and art 9 (1) (c), the judge referred again to his judgment in Europcar and also to Red Bull. He found that Supreme had not established that the Ribbon Marks had the requisite reputation and even if it had the average consumer would not link Henry Bell's use of the sign SUPREME with the Ribbon Marks since there is no similarity apart from the non-distinctive word SUPREME. Even if there was a link, he did not consider that Supreme had shown that Henry Bell's use of the sign SUPREME had been, or was likely to be, detrimental to the distinctive character of the Ribbon Marks. The distinctive character of the Ribbon Marks resided in the graphical elements. There was nothing similar in Henry Bell's sign. Furthermore, use of the sign SUPREME was commonplace in the animal food sector. Moreover, the defendant had due cause to use that sign in that its use was entirely descriptive.  Overall, his lordship concluded that Henry Bell's use of the sign SUPREME did not amount to unfair competition with Supreme Petfoods and was in accordance with honest practices in industrial and commercial matters. Accordingly, Henry Bell had a defence under s.11 (2) (b) of the Act and art 12 (b) of the directive.

Counsel for the claimant conceded in his closing submission that if the claim under s,10 (2) and art 9 (1) (b) failed so too would his claim for passing off.

When taken together Mr Justice Arnold's decisions in Supreme Petfoods and Europcar are almost a textbook on the law of trade mark infringement and to some extent the law of passing off.  Those judgments analyse, systematize and simplify nearly two decades of arcane and in some respects contradictory case law of the Court of Justice and the General Court. For that practitioners owe him a great debt of gratitude. Should anyone wish to discuss this case note, he or she should not hesitate to call me on 020 7404 5252 or contact me through this form.