Trade Mark Infringement and Passing off - Natural Instinct Ltd v Natures Menu Ltd.

Dirk Vorderstraße / CC BY (https://creativecommons.org/licenses/by/2.0)

Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) Natural Instinct Ltd v Natures Menu Ltd [2020] EWHC 617 (IPEC) (20 March 2020)

This was an action for trade mark infringement and passing off between two medium-sized enterprises.     Mr David Stone sitting as an Enterprise Judge heard 9 witnesses on 13 and 14 Feb and delivered judgment on 20 March 2020. The costs that the losing party will be ordered to pay to the successful party will be capped at £50,000.  It is it an example of how an intellectual property dispute should be resolved.  Save that the Wood Green County Court's jurisdiction had been limited to patents snd designs when it opened, this is probably just the sort of case that Sir Derek Oulton would have had in mind when he recommended the establishment of patents country courts in 1986.

The claimant, Natural Instinct Ltd., is the registered proprietor of UK trade mark number UK00002626609:

The mark is registered for

"Foodstuffs for dogs and cats; dog food; cat food; dog biscuits; bones and chewing bones for dogs; treats (foods) for dogs and cats; litter for dogs and cats." in class 33. 

The Defendant, Natures Menu Ltd., sold dog food in the following packaging:

Later it changed to this packaging:

Natural Instinct Ltd. sued Natures Menu for trade mark infringement under s.10 (2) and (3) of the Trade Marks Act 1994 and also for passing off.

Directions including a list of issues were agreed by the parties enabling Judge Hacon to dispense with s case management conference.   Those issues were whittled down to the following by the end of the  trial:

"(1) Has the Trade Mark acquired a high level of distinctiveness and reputation for the purposes of sections 10 (2) and 10 (3) of the Act?
(2) Has the Claimant acquired goodwill under:
(i) the name "Natural Instinct"; and
(ii) the Trade Mark?
.........................................................
(6) Does the Defendant's sign infringe the Trade Mark under section 10(2) of the Act?
(7) Does the Defendant's sign infringe the Trade Mark under section 10(3) of the Act?
(12) Do the Defendant's acts amount to passing off?"

The defendant conceded that its signs "TRUE INSTINCT" and "NATURES MENU TRUE INSTINCT" are similar to the registered mark and that the goods that it sold under those signs were identical to those for which the mark was registered,  It was common ground that Mr Stone should apply the principles summarized by Mr Justice Arnold as he then was in Sky Plc and others v Skykick UK Ltd and another [2018] RPC 5, [2018] EWHC 155 (Ch), [2018] ETMR 23 at paragraph [287] of his judgment:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."

In making the global comparison, the sign is to be considered in the context in which it is used. As Lord Justice Kitchin said in Maier and another v ASOS plc and another [2015] EWCA Civ 220 at paragraph [79]:

"the court must take into account all the circumstances of the actual use of the sign that are likely to operate in the average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."

At paragraph [80] of his judgment, Lord Justice Kitchin said:

"If the mark and the sign have both been used and there has been actual confusion between them, this may be powerful evidence that their similarity is such that there exists a likelihood of confusion."

As for s.10 (3), both parties accepted the statement of the law formulated by the Registry for s.5 (3) oppositions or invalidity proceedings which had been distilled from the Court of Justice's case law:

"(a) The reputation of a trade mark must be established in relation to the relevant section of the public as regards the goods or services for which the mark is registered; General Motors, paragraph 24.
(b) The trade mark for which protection is sought must be known by a significant part of that relevant public; General Motors, paragraph 26.
(c) It is necessary for the public when confronted with the later mark to make a link with the earlier reputed mark, which is the case where the public calls the earlier mark to mind; Adidas Salomon, paragraph 29 and Intel, paragraph 63.
(d) Whether such a link exists must be assessed globally taking account of all relevant factors, including the degree of similarity between the respective marks and between the goods/services, the extent of the overlap between the relevant consumers for those goods/services, and the strength of the earlier mark's reputation and distinctiveness; Intel, paragraph 42.
(e) Where a link is established, the owner of the earlier mark must also establish the existence of one or more of the types of injury set out in the section, or there is a serious likelihood that such an injury will occur in the future; Intel, paragraph 68; whether this is the case must also be assessed globally, taking account of all relevant factors; Intel, paragraph 79.
(f) The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an unfair advantage where it seeks to ride on the coat-tails of the senior mark in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image. This covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation (Marks and Spencer v Interflora, paragraph 74 and the court's answer to question 1 in L'Oreal v Bellure)."

The deputy judge added:

(g) Once the elements of infringement are established, it is for the defendant to show that the use has been with due cause (Intel, paragraph 39),
(h) The relevant date for assessing infringement is the date on which the allegedly infringing use commenced: Case C-145/05 Levi Strauss & Co v Casucci SpA   [2006] ECR I-3703, [2007] FSR 8, [2006] ETMR 71, [2006] EUECJ C-145/05.
(i)  If the only similarity between the trade mark and the signs complained of is a common element that is descriptive or otherwise of low distinctiveness, that points against there being a likelihood of confusion: Whyte and Mackay Limited v Origin Wine UK Limited [2015] EWHC 1271 (Ch).
(j) While the mark and the signs must be considered as a whole, the average consumer normally attaches most importance to the first part of a word: joined cases T-183/02 and T-184/02 El Corte Inglés v OHIM.

On the law of passing off, Mr Stone referred to Lord Oliver's speech on the ingredients of the action in Reckitt & Colman Products Limited v Borden Inc [1990] RPC 341 at 406.  He directed himself that the relevant date for assessing goodwill and misrepresentation is the date that the alleged passing off commenced (per Starbucks (HK) Limited and another v British Sky Broadcasting Group plc and others  [2015] UKSC 31 at paragraph [16] and  Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429 at 494).  The defendant reminded him to distinguish between "mere confusion" and "deception" or its likelihood, that mere confusion may need to be tolerated in some circumstances and that it is not enough that careless or indifferent people may be led into error (per Norman Kark Publication Limited v Oldhams Press Limited [1962] 1 WLR 380 at 383).  It is not a necessary ingredient of the cause of action that the defendant intended to mislead but claimants sometimes seek to establish such intention as the court will not "be astute to say that he cannot succeed in doing that which he is straining every nerve to do" (per  Lindley LJ in Slazenger & Sons v Feltham & Co (1889) 6 RPC 531 at 538).

Mr Stone turned next to the issues still in dispute:

Issue 1 - Has the Trade Mark acquired a high level of distinctiveness and reputation for the purposes of sections 10  (2) and 10 (3) of the Act?
He noted that reputation is an essential element for s.10 (3) but not for  s.10 (2) though it does increase the likelihood of infringement.

The deputy judge considered market research by IPSOS Mori that the defendant had commissioned in 2017. It showed that that "Natures: menu [sic], Natural Instinct and Country Hunter are the strongest raw food brands". The first and last of those brands are the defendant's and the second is the claimant's.  IPSOS interviewed 1,008 dog owners aged between 18 and 70. 34% of respondents were aware of the defendant's NATURES MENU brand, and 22% were aware of the claimant's NATURAL INSTINCT brand.  He also had the defendant's managing director admission that NATURAL INSTINCT is "one of the strongest raw food brands", a survey in Dog's Monthly from 2016 which ranked the claimant as the most trusted pet food company out of 67 and the defendant number, sales of nearly 19 million units between 23 March 2010 and 31 Dec 2018, an evaluation report from Crufts showing that 38% of visitors had heard of the claimant, website analytics and advertisements in Dogs Monthly, Dogs Today, Dog World, and Our Dogs as well as more general pet and general interest publications such as Pet Gazette, Rescue a Pet and Animal Care Magazine, Smallholder, Daily Express, The Blackwater Buzz, Sporting Gun, Total Boarding Magazine, Total Grooming Magazine, and Animal Therapy Magazine.   

Mr Stone concluded that this evidence, taken together, was overwhelming. He had no doubt that the Trade Mark was at the relevant date a mark which had acquired a high level of distinctiveness for the purposes of s.10 (2) and a mark with a reputation for the purposes of s.10 (3).

Issue 2 – Has the Claimant acquired goodwill under (a) the name "Natural Instinct" and (b) the Trade Mark?

The deputy judge noted that the defendant had already admitted goodwill and the evidence that established reputation and distinctiveness in the trade mark also supported a finding of goodwill in the name and mark

Issue 3 – Is the sign used by the Defendant in the course of trade "Natures Menu TRUE INSTINCT" or "TRUE INSTINCT"?

That point had already been conceded but in any case, the packaging proved the point beyond peradventure.

Issue 4 – By the time of the launch of the Defendant's TRUE INSTINCT range, was the Defendant's Natures Menu name well-known to members of the relevant trade and the public as a leading supplier of raw dog food?

This was conceded by the claimant.  The defendant had tried to rely on the concession as a defence to trade mark infringement and passing off, but the addition of a house mark in addition to an infringing sign does not absolve the infringer.

Issue 6 – Does the Defendant's sign infringe the Trade Mark under section 10 (2) of the Act?

Mr Stone compared the mark with the defendant's signs and noted that the words "NATURAL" and "INSTINCT" were the dominant features of the mark and the words "TRUE" and "INSTINCT" were the dominant features of the sign.  The word "INSTINCT" was common to both of them.  Relying on several other pet food products incorporating the word "INSTINCT" the defendant argued that the word "INSTINCT" was generic and descriptive and produced samples of packaging from all over Europe to back up its point. Two of those products were sold in the UK but, in the absence of sales figures with dates, the deputy judge was unpersuaded. He concluded the mark and sign were similar though to a low degree.

As for aural similarity, the position was analogous.  As consumers would refer to the competing products by their short names, the degree of similarity was medium.

Conceptual similarity, however, was very close in that both the defendant's sign and the registered mark meant something like "real instinct."

The deputy judge concluded at paragraph [90]:

"The Defendant conceded that the goods on which it uses its signs are identical to the goods for which the Trade Mark is registered. I have found that the Trade Mark had, by September 2017, acquired a high degree of distinctiveness through use, making a likelihood of confusion more likely. I have also held that, whilst Natures Menu was at the relevant date a well-reputed brand, that does not exculpate the Defendant from trade mark infringement. The parties agreed that the relevant consumer was an average, reasonably circumspect consumer, and given the high number of pet cats and dogs in the United Kingdom, that must be the case. Whilst pet owners care for their animals, they are no more than usually attentive. Taking into account the similarity of both signs to the Trade Mark (to a medium degree) and the identity of the goods, taking into account the context in which the signs are used, and the case law to which I was referred, in my judgment, there is a likelihood of confusion."

Although it was not necessary for him to do so, Mr Stone considered the evidence of actual confusion and held that there was ample evidence of actual consumer confusion by relevant consumers to confirm his finding that there was a likelihood of confusion in this case.

Issue 7 – Does the Defendant's sign infringe the Trade Mark under section 10 (3) of the Act?

Having set out the conditions for infringement under s.10 (3), the deputy judge considered whether they had been satisfied.

(a) Reputation: The defendant accepted that the registered mark had a reputation in the UK as at the relevant date, but contended that it was not as extensive as the claimant had claimed. The judge's finding that the claimant enjoyed a reputation in the mark combined with the defendant's concession was sufficient to clear that low hurdle (Sky v SkyKick at para [307]).

(b) Use: This was conceded by the defendant.
(c) Course of trade: This was also conceded by the defendant.
(d) Without consent: This was also conceded.

(e) Similarity of signs: Similarity was also conceded at a low level. Mr Stone found that the signs used by the defendant were similar to the mark to a medium degree.
(f) Goods: The defendant conceded that the use of its signs was in relation to goods;
(g) Link: The finding that the signs are similar to the trade mark together with evidence of instances of actual confusion was enough to establish a link.
(h) Detriment to the distinctive character etc:  The survey of readers of Dogs Monthly put the claimant first in terms of trust felt by the respondents and the defendant Anything that risks the claimant's repute would constitute detriment.  Conversely, anything that gives the defendant a leg-up would be an unfair advantage.
(i) Due cause: Once the conditions for liability have been satisfied, the onus shifts to the defendant to prove that its otherwise infringing activity was with due cause. The defendant did not address this in any detail but it had earlier argued that it had been licensed by the owner of the TRUE INSTINCT EU trade mark,  Even if that were so the deputy judge held that it would not amount to "due cause" in the light of Sky v SkyKick paragraph [316] citing Case C-65/12 Leidseplein Beheer BV v Red Bull GmbH,

The claimant having made out the eight conditions it was required to meet, and the defendant unable to establish that it acted with due cause, it followed that the defendant's use of the signs infringed the trade mark under s.10 (3) as well as s.10 (2).

Issue 12 – Do the Defendant's acts amount to passing off?

Having found that the claimant has goodwill in both the trade name and trade mark and that there was a likelihood of confusion which in this case would also amount to misrepresentation, Mr Stone held that that the defendant was liable for passing off.

Anyone wishing to discuss this case note or trade marks or passing off generally should contact me through my contact page.