Supreme caution required when applying double identity rule

A recent High Court decision1 not only demonstrates the difficulty for trade mark owners in enforcing descriptive trade marks (and the risk that those trade marks may be found to be invalid) but also highlights potential pitfalls where trade marks co-exist within the same market.

Also of interest is Arnold J's criticism of the Court of Appeal's decision in Interflora with regard to burden of proof for "double identity" cases.

Background

In 1990, Supreme Petfoods (SP) launched a muesli rabbit food which it marketed using a cartoon character called "Russel Rabbit".  On its packaging was the word "supreme" in a banner.  The success of that product led to the introduction of a larger range of muesli pet food products, including "Gerty Guinea Pig", each sold in similar packaging to that of "Russel Rabbit" but used different colouring and cartoon characters on each.  Between 2003 and 2007, SP registered five Community and UK trade marks consisting of, or including, the word SUPREME.

The defendant Henry Bell (HB) and its predecessors had marketed a product called "Mr Johnson's Supreme Rabbit Mix" since 1994. SP originally contacted HB's predecessors in October 1994 to ask it to delete the word "supreme" from a banner on the packaging or to delete the banner, but did not ask them to stop using the word itself.  HB subsequently dropped the banner but continued to use the word" supreme" on various products.

In 2012, Henry Bell extended its range of "supreme" pet foods and re-designed the packaging.  SP complained about the use of the word "supreme" in the name "Mr Johnson's Supreme Rabbit Mix" and sued for trade mark infringement and passing off.

Decision

Arnold J dismissed the trade mark infringement and passing off claims, finding that HB's use of "supreme" would be understood by pet owners to be descriptive or laudatory, given its OED definition meaning "of the highest quality".  Three of SP's "supreme" marks were therefore found to be invalidly registered, save in relation to small animal food, where the marks had acquired a "slender degree" of distinctive character.  However, SP's UK and CTM stylised ribbon marks were validly registered.

Further HB's use of the sign amounted to honest concurrent use, as it had used it on products for over two decades without causing confusion.

Arnold J took the opportunity to consider where the burden of proof in demonstrating prejudice to trade mark functions lies.  Notably, he disagreed with the Court of Appeal's decision in Interflora Inc v Marks & Spencer plc (which itself overturned Arnold J's decision at first instance) that, in "double identity" cases, the burden falls on the trade mark owner. Instead he considered that, once the trade mark owner had satisfied the first five conditions under Article 5(1)(a) of the Trade Marks Directive (2008/95/EC), the burden of proof shifted to the defendant to show that his use did not result in prejudice.

Conclusion

The decision shows how trade mark co-existence can become problematic when one party decides to overhaul or extend its product range.  It also illustrates the pitfalls of seeking to enforce descriptive trade marks, running the risk of an invalidity counterclaim (which SP was able to successfully defend only in relation to small animal food by evidencing a "slender degree" of distinctive character). 

As practical guidance, brand owners should be aware of competitors' use of trade marks and any changes introduced and, if appropriate, try to agree commercial solutions.  As can be seen from this decision, initiating litigation – particularly when relying on relatively generic trade marks – can be costly, not only financially but also to the validity of the trade marks themselves.