Mar 3, 2015

Battle of the Brands: When is a trade mark not a trade mark?

In a recent judgement in the case between Supreme Pet Foods Ltd v Henry Bell & Co (Grantham) Ltd, Arnold J was tasked with deciding on a claim for trade mark infringement and a counter claim for trade mark invalidity in respect of the use of the work 'Supreme' in two leading small animal pet food producers.

Background

The Claimant, Supreme Pet Foods, has been trading in the pet foods industry since the mid-1980s. They initially started out selling dog food then moved into muesli rabbit food under the name 'Russel Rabbit' in 1990. They increased their range of muesli pet foods for other small animals including hamsters, ferrets and gerbils. Although these products were known by their brand name, i.e. 'Russel Rabbit' muesli mix, the parent company brand recognition was low, and so in an attempt to raise the profile of Supreme Pet Foods, a range of Community and UK trade marks were registered between 2003 and 2007 featuring use of the word 'Supreme', the stylised word or ribbon mark.

The Defendant, Henry Bell & Co (Grantham), is a family business established in 1982 which trades in the agricultural and cereals industry. The business developed into a manufacturer of cereals and small animal foods for other businesses. In 2009, Henry Bell acquired Grain Harvesters Ltd, trading as My Pet Foods. This company included the pet foods brand "Mr Johnson's", a company that Henry Bell had been manufacturing and supplying small animal foods since 2007.

In 1994, the 'Mr Johnson's' brand was selling a product called 'SUPREME RABBIT MIX' printed on a banner. This prompted correspondence from Supreme Pet Foods in October 1994 saying:

" … our concern is that there is likely to be some confusion in the minds of the public who may believe that your SUPREME RABBIT MIX is in some way associated with this company.

The principal element of our Corporate Identity is the SUPREME PETFOODS Trademark which positions the word SUPREME within a stylised banner. …

I gather that both your bulk packaging and your bag leaflets similarly portray your product name within a banner, so giving the impression of a brand rather than a descriptive title.

We would obviously not wish you to suffer unnecessary financial loss over this matter, so would merely seek your assurance that at the next production run of any print elements communicating your SUPREME RABBIT MIX, and in any event no later than 31/12/94, you will delete either the banner or the word SUPREME. It is the combination of these two elements which we believe infringes our established mark."

Evidently, Supreme Pet Foods were happy for the word 'Supreme' to be used but not in conjunction with the use of the banner. S & E Johnson Ltd, (SEJL), the company behind the brand confirmed that, 'Mr Johnson's duly complied with the above complaint and the packaging removed the banner and kept use of the word 'Supreme'.

In time, the use of the word 'Supreme' was used by SEJL in a variety of other pet food products before the company was sold to the Defendant, Henry Bell & Co. The Defendants, realising the strength of 'Mr Johnson's' brand brought all their small animal foods under the brand and continued to use the word 'Supreme', much to the dislike of the Claimant, Supreme Pet Foods who sued the Defendant for trade mark infringement and passing off. The Defendant denied the allegations and counter claimed for a declaration of invalidity on the grounds of the Claimant's mark being descriptive or devoid of distinctive character.

Decision

In dismissing the Claimant's claim and invalidating their word mark 'Supreme' Arnold J, held the word mark to be descriptive, or in the alternative, laudatory and thereby lacking distinctive character. With regard to the UK and Community registered stylised word mark displayed above, Arnold J declared the marks to have been invalidly registered, save in relation to small animal food, as the stylised font adds nothing to their distinctive character. The ribbon mark was held to be a valid UK and Community trademark

Furthermore, it was found that there had been honest concurrent use of the word 'Supreme' by Henry Bell for a period greater than 20 years without causing confusing due to the inherent brand strength of the Defendant's 'Mr Johnson's' brand, and the Claimant's 'Russell Rabbit' brand.

The use of the word 'Supreme' was also found to be a common place term in the pet foods industry and in any event, Henry Bell & Co (Grantham) had not infringed on the rights conferred by Article 5(1)(a) of European Parliament and Council Directive 2008/95/EC as they had not used the word 'Supreme' as a trade mark but as a descriptor of quality, pursuant to Article 6(1)(b).

In introducing his Judgment, Arnold J summarised the case as:

"the Claimant seeks in essence to monopolise use of the word SUPREME as a trade mark for animal food."  Later, Arnold J provided a litany of examples on the common place of nature of the word 'Supreme' in the animal foods industry.

Indeed, Arnold J continues by saying that "it ought to be possible for such a dispute to be resolved without great legal difficulty or expense…As a result [of the considerable number of legal and factual issues], I fear that the costs will have been out of all proportion to what is at stake."

It can only be surmised that Arnold J was less than impressed with the number of issues raised which he says, "…were reduced as a result of sensible concessions made by both sides during closing submissions".

See link for a copy of the full judgment of Supreme Pet Foods Limited v Henry Bell & Co (Grantham) Limited.

Posted by: in: Case Law, News, Trade Marks

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