Arnold J. does battle again with the complexities of European Trade Mark law in a dispute about the trade mark SUPREME for foodstuffs for rabbits and other small animals.
The Claimant ("Supreme Petfoods") has been in the business of manufacturing and marketing pet foods since the 1980s. In the early 1990s Supreme Petfoods positioned itself as an innovator in small animal welfare, making species-specific foodstuff for animals like rabbits, hamsters, guinea-pigs and ferrets. Food for each animal type was given a specific brand name such as Russel Rabbit or Harry Hamster.
Supreme Petfoods had a UK Trade Mark for the word "SUPREME", UK and Community Trade marks for a stylised version of the word "SUPREME" and UK and Community Trade Marks for a logo (referred to as a ribbon) which incorporated the stylised word mark.
Supreme Petfoods products bore the ribbon mark, but by far the more prominent branding was the animal specific brands, Russel Rabbit and the like.
The Defendant ("Henry Bell") was established in 1825 as an agricultural merchant, but had for many years included in its products a variety of foods for small animals and wildlife. In 2009, Henry Bell acquired Grain Harvesters Ltd. whose business had included the "Mr Johnson's" brand of pet foods, which had been marketed by S & E Johnson Ltd. since the early 1990s. The Mr Johnson's range had included a product called Supreme Rabbit Mix.
In March 2012 Henry Bell launched a rationalised and repackaged range of pet food. The rabbit food packaging included in the range is illustrated here.
The evidence showed that a considerable number of third parties used the word SUPREME in connection with animal foodstuffs. Arnold J. cited more than 30 examples including Clarks Animal Feeds Supreme Rabbit Mix, Alan Titchmarsh Seed Supreme (a bird food), Butcher's Supreme Feast (a dog food), GW Titmus Rabbit Mix Supreme and others.
The case raised many of the issues usually encountered in trade mark cases including :
- Were the trade marks valid and if so were they registered for a sufficiently narrow specification of goods?
- If the marks were not inherently distinctive had they acquired distinctiveness by reason of the use of them by Supreme Petfoods?
- What is the relevant date at which the issue of infringement had to be determined?
- As this was a case of double identity (same mark and same goods) were the six conditions for infringement present? In particular, did the use of the sign by Henry Bell affect, or was it likely to affect, one of the functions of the trade mark (condition (vi))?
- On which party did the burden of proof lie in relation to condition (vi)? Was it for the claimant to show that the use by the defendant was likely to affect the functions of the trade mark or was the burden on the defendant to establish that it did not? Was the position in relation to the burden of proof the same in cases where the use was a reference to the proprietor's own goods (for example the Keyword cases) as in cases where the use was in connection with the defendant's goods?
- Was the use of the word SUPREME by Henry Bell purely descriptive?
- If the use by Henry Bell was not purely descriptive had Henry Bell made out a case that their use did not affect the origin function of the mark?
- Did Supreme Petfoods have a case of infringement under Article 5(2) of the Directive/Article 9(1)(c) of the Regulation (mark having a reputation)?
- Did Henry Bell have a defence under Article 6(1)(b)/Article 12(b) (honest concurrent use)?
The court's assessment and decision
Arnold J.'s decision is available here. The judge started his consideration of the issue of validity by reviewing the cases on who constitutes the average consumer. This was of some relevance as Supreme Petfoods led evidence about the significance of the mark in the trade. He concluded that, in most cases, the perceptions of the consumer, pet owners in this case, were what mattered and the perceptions of intermediaries, wholesalers, retailers and vets, did not matter. There was some argument that retailers were more important in this case, but Supreme Petfoods' case was not disadvantaged, in the judge's view, by considering the case from the point of view only of pet owners.
The main part of Arnold J.'s judgement on validity relates to questions of whether the marks were distinctive. He took the law mainly from Case C-265/09 P OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG  ECR I-8265. Without analysing the factual background in detail the judge found that the UK Word Mark lacked any inherent distinctive character and that the UK and Community Stylised Word Mark added nothing distinctive over the word mark and so also lacked inherent distinctiveness. The UK and Community Ribbon Marks, however, had just enough inherent distinctiveness to qualify.
The judge then considered whether the word and stylised word marks had acquired distinctiveness by use by the relevant date which was the date of the counterclaim in the action. He took the law from his judgement in Enterprise Holdings Inc v Europcar Group UK Ltd  EWHC 17 (Ch) and reviewed the advertising. There was some survey evidence but it showed relatively poor awareness of the trade mark. Although Supreme Petfoods' products were much better known by their animal related brands such as Russel Rabbit than by the name SUPREME, by a slender margin the word mark SUPREME had acquired a measure of distinctiveness.
The judge thought the marks were only distinctive in relation to small animal foods. The specifications of goods were required to be narrowed.
The first question addressed by the judge was the relevant date for considering the infringement case. The parties put forward competing dates and Supreme Petfoods argued that the dates for its claim under Article 5(1)(a) and its claims under Articles 5(1)(b) and 5(2) were different. The judge rejected this suggestion; the date had to be the same for all aspects of the claim. With hesitation the judge found that the relevant date was the date when Henry Bell revamped their range, March 2012.
There was little doubt that conditions (i) to (iv) of the test for infringement in cases of double identity were satisfied. Henry Bell had used a sign identical to the trade mark within the relevant territory, in the course of trade, without the consent of Supreme Petfoods.
Most of the judgment on infringement is concerned with condition (vi), that the use complained of must affect, or be liable to affect, one of the functions of the trade mark. The only function considered in this case was the origin function.
Arnold J. spends a large part of his judgment on the question of where the onus of proof lies in relation to condition (vi), where conditions (i) to (v) are established as being present, a subject on which Arnold J. was reversed by the Court of Appeal in its judgement in Interflora Inc v Marks and Spencer plc  EWCA Civ 1403. Where there is double identity is it for the proprietor to show that the use of the sign by the Defendant is liable to affect one of the functions of the trade mark, or is it for the Defendant to show that its use of the sign does not affect the functions of the trade mark?
One of the matters considered by the judge was the effect of Article 16(i) of the TRIPS agreement. While not directly actionable, it is well established that both European and domestic legislation is to be interpreted as far as possible in the light of international agreements and TRIPS in particular (see for example Case C-53/96 Hermès International v FHT Marketing Choice BV). Article 16(i) indicates that in cases of double identity, a likelihood of confusion (and hence of detriment to the origin function) is to be presumed. This suggests it is for the Defendant to displace the presumption.
The judge reviews the jurisprudence of the Court of Justice of the European Union (CJEU) at length, including cases of referential use such as Arsenal and keyword use such as Google France. He also considers that the cases on parallel import and on honest concurrent use are a pointer towards the view that the onus in double identity case shifts to the Defendant.
On the facts as he finds them, none of this matters particularly to the judge's conclusions. On the facts he finds that, "In my judgment Henry Bell's use of the sign SUPREME would be understood by the average consumer as being purely descriptive." Accordingly condition (v), which requires that the use be "in relation to goods or services" is not satisfied.
If condition (v) is not satisfied neither is condition (vi), but the judge goes on to consider the possibility that he is wrong about condition (v). Accordingly he considers the defence of honest concurrent use by Henry Bell. Given that Mr Johnson's SUPREME RABBIT MIX had coexisted with Supreme Petfoods' use of SUPREME for over 20 years and that, in the view of the judge, confusion had not been made out, he concluded that Henry Bell's use was honest concurrent use.
Accordingly the action failed on the word mark. The judge also held that the action on the stylised work marks and the ribbon marks under Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation failed essentially because the stylisation added nothing distinctive and the graphical elements of the ribbon marks had not been taken.
A claim of infringement of the Ribbon marks based on Article 5(2) of the Directive/Article 9(1)(c) of the Regulation was also dismissed, largely on the basis that the trade marks lacked the required distinctiveness.
At the outset the judge bemoans the complication of the case, a case which he thought ought to be able to be resolved "without great legal difficulty or expense". He attributes the difficulty to "the current state of European trade mark law".
There are probably several reasons why this level of complication has appeared in a legal area that had always been assumed to be relatively straightforward, at least from the legal point of view. One reason is the increasing complexity of the way in which brands are used and the attachment that brand owners have to them. Keyword advertising is an example. The draughtsman of the Trade Marks Act, 1938 had no such complexities to deal with.
The division of functions between the national courts and the CJEU also plays a part. Question such as whether the use of a sign by a Defendant affects the functions of a trade mark are mixed questions of law and fact. One has to question whether the strict division of function called for by Article 267 of the TFEU, encourages a synergistic resolution of questions of this type.