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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> George East Housewares Ltd v Fackelmann Gmbh & Co KG & Anor (Rev 1) [2016] EWHC 2476 (IPEC) (11 October 2016) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2016/2476.html Cite as: [2016] EWHC 2476 (IPEC) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
sitting as a Deputy Enterprise Judge
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GEORGE EAST HOUSEWARES LIMITED | Claimant | |
and | ||
(1) FACKELMANN GMBH & CO KG (2) PROBUS CREATIVE HOUSEWARES LIMITED |
Defendants |
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Mr Brian Turner of Gordons Partnership LLP for the Defendants
Hearing date: 21 July 2015
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Crown Copyright ©
Deputy Enterprise Judge Michaels:
Introduction
(1) Did the Claimant, by at least January 2013, own goodwill in its business associated with the defined Get-Up such that cups bearing the Get-Up were distinctive of the Claimant?
The "Get-Up" was that pleaded at paragraph 4 of the Particulars of Claim (which I have set out below) but excluding the Tala brand name. The pleaded list of features was to be taken as exhaustive.
(2) Was the get-up complained of, in the two versions pleaded in the Particulars of Claim and/or a combination of the two, similar to the Get-Up, such that its use constituted a misrepresentation to consumers or the trade that Probus's goods were those of or otherwise associated with the Claimant?
(3) Has the Claimant suffered damage as a consequence of any misrepresentation?
Background facts
"The TALA range of products has a distinctive get-up which has been in use since at least 1951 and which comprises the use of the TALA Logo and the colours red, blue, black and cream/white. Further the iconic 'Cook's Dry Measure' has, since at least 1951 been produced, marketed and sold under and by reference to its distinctive appearance and in particular its shape and distinctive get-up which includes:
a. The shape of the product (in use since 1934):
i. A conical shape with an overall shiny/metallic finish;
ii. A silver metallic circular base which consists of a wide base with a curled outer edge, raised edges leading upwards to a smaller flat circular platform upon which the cone shaped cup sits;
b. The brand name 'TALA' displayed at the top of the cone;
c. The get-up of the exterior of the product which includes:
i. A broad stripe of primary colour at the bottom of the cone within which appears a metallic/silver circular section with text appearing therein and an outer thin metallic/silver circle.
ii. A prominent stripe/central band on the cone of the same primary colour as the aforementioned broad stripe against a silver/metallic background with the text 'COOK'S MEASURE' appearing above it in black capital lettering.
iii. The use of the colours red, blue and/or black against a shiny/metallic finish.
d. The get-up of the interior of the product which includes:
i. A creamy/white coloured background which curls over the top of the cup onto the exterior;
ii. A series of vertical tables running down the cup with the outline of the tables and/or the text contained therein appearing in black and/or red;
iii. The names of the following foodstuffs: Rolled Oats Fresh Bread Crumbs; Desiccated Coconut; Cornflour Cocoa; Gd-Almonds Shredded Suet; Sugar Rice; Haricots Lentils Barley Peas; Sultanas Tapioca; Ground Rice Currants Semolina Raisins; Custard Pdr Flour Milk Icing Sugar, with measurements for each running down each table in grams or ounces highlighted in black."
The Law
"The law of passing off can be summarised in one short general proposition—no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of purchasing public by association with the identifying "get-up" … such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant … (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods and services the plaintiff. … Thirdly, he must demonstrate that he suffers … damage …"
"The question that we have to determine is whether in selling the bottle a person is likely to be deceived by the resemblance of the one thing to the other; and if a person is so careless that he does not look, and does not, … "treat the label fairly," but takes the bottle without sufficient consideration and without reading what is written very plainly indeed upon the face of the label on which the trader has placed his own name, then you certainly cannot say he is deceived—in fact he does not care which it is. …
The whole question in these cases is whether the thing—taken in its entirety, looking at the whole thing—is such that in the ordinary course of things a person with a reasonable apprehension and with proper eyesight would be deceived."
Similarly, Lord Lindley held at p. 607:
"It appears to me that the real answer to the Appellants' case is this—that they invite your Lordships to look, not at the whole get-up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the Appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up, and not only that part of it in which the resemblances are to be found, the whole get-up does not deceive."
"It is clear at least from the decision of this House in William Edge & Sons Ltd. v. William Niccolls & Sons Ltd. [1911] AC 693 that where the article sold is conjoined with an object which, whilst serving the functional purpose of enabling the article to be more effectively employed, is of a shape or configuration which has become specifically identified with a particular manufacturer, the latter may be entitled to protection against the deceptive use in conjunction with similar articles of objects fashioned in the same or a closely similar shape.."
"Now the ingredients of passing off are the "classical trinity" … (1) goodwill of the plaintiff, (2) misrepresentation by the defendant, (3) consequent damage. The plaintiff's problem of proof when there is no manifest badge of trade origin such as a trade mark becomes hard. This is so in the case of a descriptive or semi-descriptive word such as "Camel Hair". It is perhaps even more so where one is concerned simply with the appearance of the article with no self-evident trade origin frill or embellishment. For people are likely to buy the article because of what it is, not in reliance on any belief of any particular trade origin. This is so whether they buy it for its eye-appeal (e.g. glass dogs) or for what it does (e.g. the copy Rubik cube of Polytechnika etc. v. Dallas Print Transfers Ltd [1982] F.S.R. 529).
The plaintiff's problem of proof lies in relation to the first two items of the trinity, which are related. It is not good enough for him to show that his article is widely recognised—has a "reputation" in that general sense. The "Louis furniture" of Jarman & Platt v. Barget [1977] F.S.R. 260 had virtually "captured the market" but that did not:
begin to prove that a substantial number of the members of the public who buy those goods do so because they know of, or have any interest in, the particular source of the goods; or that they are attracted to buy those goods because of their knowledge or belief that they emanate from a particular maker: per Megaw L.J. (at p. 273).
…
It is, I think, precisely because the difficulties of proof are so great that successful cases of passing off based on the shape of the goods are so rare. …
Mr Morcom pressed me with a proposition based on length of use. He suggested that where a particular trader had been the sole source of a product recognised by its appearance by users for a sufficient time, that recognition somehow turned into a relevant reputation: that it should be assumed consumers had come to want the product not only for its functional or visual qualities but because they wanted the product from that particular trade origin and none other. Length (and extent) of use is obviously relevant to establishing recognition by the public. But it can never be enough on its own to establish what might be called "brand loyalty" for the shape of the product itself.
In the end, the case comes down to two simple questions. Have the plaintiffs proved that the shape of their cushion is the "crucial point of reference" for those who want specifically a ROHO cushion ... And have they proved that persons wishing to buy a ROHO cushion are likely to be misled into buying the FLO'TAIR …?
Before turning to the evidence, I would make one general observation. It was the Rev. Wm. Paley who said: "The watch must have had a maker." In that sense every manufactured article conveys a representation—that it had a maker. Now where an article has a readily distinguishable appearance and there has only been one maker, once the article becomes well-known in the market, consumers when they see an article like that may assume that it is made by the same maker as he who made the articles of that individual appearance which they have seen before. So, in the instant case, almost all those who casually saw the FLO'TAIR Cushion (or just a picture of it) reacted by saying "that is a ROHO". One more precisely said "that is a ROHO or a convincing copy." This sort of evidence alone can seldom, if ever, satisfy the legal test for passing off. It does not prove that anyone relies upon the appearance to get the product of the maker they want."
"It is recognised that it is more difficult to acquire a sufficient reputation and goodwill in the shape or get—up of a product. Whilst the principal function of a brand name is to denote origin, the shape and get up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball is an example) does not necessarily, or even normally, conclude that they come from the same source. The claimant must prove that the shape of its goods has come to denote a particular source to the relevant public."
"82 … the Henry vacuum cleaner is seen by the public as having the appearance of a small person. To that extent, the shape has a secondary meaning.
83 Secondly, I do not find it at all implausible to suppose that members of the public will still recognise the product even if one or more of the elements which give it that character are removed, provided enough remains to convey the same message. The public are perfectly capable of recognising a Henry without the smiley face, although I accept that their degree of confidence may be rather less than if the smiley face and name were there.
…
85 I do not accept that the omission of the face and the name was sufficient to avoid passing off: in my judgment not all sensible purchasers would be put on enquiry by their absence. The public have been educated to recognise the overall shape combined with the black bowler hat as indicia of a genuine Henry. Once consumers think they recognise a product they do not necessarily conduct an analysis of all the reasons which have led them to that belief. They first have to pause sufficiently to notice the absence of the face and name. Like some of the witnesses, they may think that they have been taken off to give the Henry a more serious professional look."
"Once the position strays into misleading a substantial number of people (going from 'I wonder if there is a connection' to 'I assume there is a connection') there will be passing off...
"It is not a defence to passing off that many of a defendant's sales do not cause deception or confusion. There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By 'enough' I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill."
Issue (1) Did the Claimant, by January 2013, own goodwill in its business associated with the Get-Up, such that cups bearing the Get-Up were distinctive of the Claimant?
a. Cup 7 does not have a stripe of primary colour at the bottom of the exterior of the cup, as it is silver/metallic at the bottom, and it has no wording in a contrasting circle. Instead, it has the words Cooks Dry Measure (without the apostrophe) on a wide central dark blue band, with the metallic finish above and below it.
b. Cup 7 does not have the "prominent stripe/central band" matching the stripe at the base of the cone, as described at paragraph 4(c)(ii);
c. The exterior of Cup 7 is far plainer than that of the others; the Tala brand is presented in larger font than on other cups, and the words "Cooks Dry Measure" on the dark blue central band are especially prominent. The overall look is very different to that of the Get-Up.
d. The back of Cup 7 has a measurement conversion chart, as do the others, but underneath it, over the central blue band and in quite large font it has the words "shake lightly to level contents."
e. Cup 9 reverses the colourways of the Get-Up, with silver at the base and light blue above; again, it lacks the feature of words in the circle. The words "Cook's Dry Measure" appear on the blue part of the cup, with "Cook's" emphasised by larger font and a colour contrast to "Dry Measure."
f. There is a central band of colour on Cup 9, but this does not reflect the colour of the base (as pleaded) but is in a warm cream colour, which matches the colour used on the interior of the cup.
g. Cup 9 appears to me to have a more "retro" look even than Cup 8, perhaps due to the shades of blue and cream used, and the styles of font that are used for all of the exterior wording.
Goodwill in shape alone?
Goodwill in the Get-Up as a whole or in other significant features
Issue 2: Was the get-up complained of, in the two versions pleaded in the Particulars of Claim and/or a combination of the two, similar to the Get-Up, such that its use constituted a misrepresentation to consumers or the trade that Probus's goods were those of or otherwise associated with the Claimant?
"114 … [the Claimant] submitted that if a trader takes a decision to live dangerously he recognises a risk of a successful legal action and so also recognises a likelihood that his activity will deceive some people. …
115. In my judgment it is important to distinguish between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader's goodwill. It has long been established that if it is shown that a defendant has deliberately sought to take the benefit of a claimant's goodwill for himself the court will not "be astute to say that he cannot succeed in doing that which he is straining every nerve to do": see Slazenger & Sons v Feltham & Co (1889) 6 R.P.C. 130 at p.538 per Lindley L.J. A trader who has taken the decision to live dangerously is in a different position, however. He has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away. All must depend upon the facts of the particular case. …"
a. Cup I: There is some similarity to the Get-Up, especially in the use of a band of colour at the base of the cup with a silver finish above. However, the Get-Up has consistently used blue colouring at the base of the Claimant's cups, in contrast to the bright red colouring used by the Defendants. The wording on Cup I looks very different overall to the wording of the Get-Up, and the overall impression given by the cup is much plainer and more modern than the Get-Up.
b. The main difference between the Defendants' Cups II and III and their Cup I lies in the additional and wider red band under the words DRY MEASURE and the wording "Measuring Cup etc" which is enclosed in a thin black oval on the metallic finish between the two red bands. In my view, this exterior design is closer to the Get-Up, though still gives a more modern impression than that of the Get-Up.
c. The exterior of the Defendants' Cup IV is very similar to that of Cups II and III, but a darker red is used.
The Claimant emphasised the fact that the exterior of the Defendants' Cups bears no brand or trade name whilst the Defendants emphasised that their cups do not have the retro look of the Tala cups.
a. The Independent newspaper carried a Shrove Tuesday article in February 2014, which recommended the Tala measure as a useful "retro looking bit of kit." However, the image accompanying the article was of the Defendants' Cup II. Mr Squire contacted the paper to complain and the photograph was replaced by one of Cup 8.
Mr Squire sought to get to the bottom of the confusion. A lady called Ruth Bonser of the Claimant's PR agency spoke to the journalist who had written the article. Neither lady gave evidence, but I was shown Ms Bonser's email to Mr Squire reporting on her telephone conversation with the journalist, who had apparently said that she had been supplied with photographs of the two items and "got the pictures muddled up when she sent them in."
Ms Bonser and Mr Squire both attributed this confusion to the similarity of the get-up of the cups, but that seems to me to read far too much into this incident. Without evidence from the journalist, I cannot tell whether she muddled the photographs up because she could not distinguish one cup from the other, or for some other reason, perhaps just out of carelessness. I do not think that this is a clear example of actual confusion caused by the Defendants' get-up.
b. Next, the Claimant relied upon an on-line comment about the Probus Cup II (or III) on the hotukdeals website: "I have actually been looking for one of these and almost bought for £6 in Wilco the other day. Glad I waited …" The measuring cups available in Wilco are the Claimant's alone. This may well be an example of confusion, but could equally be an example of someone seeing the Defendants' product as equivalent to or a substitute for the Claimant's product.
c. Thirdly, the Claimant relied upon a customer complaint made to Amazon in March 2013 about the return of an item ordered by reference to the Cup 8 product code because s/he was sent "an aluminium 'silver' one instead of the cream in the photo." The date of this complaint suggests that if the customer had received one of the Defendants' cups this would have had to be a Cup II or III although the reference to a silver cup may suggest that the customer received a Tala Cup 7. Again, it is possible that this is an example of real confusion on the part of someone at Amazon, which resulted in it supplying one of the Defendants' cups instead of a Cup 8. On the other hand, it may be that the customer had made a mistake in placing the order.
Exterior |
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Interior |
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Claimant's current cups 7, 8 and 9 |
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