Infringement - Use of similar trademark - Defendant selling angling paraphernalia through websites

Fox International Group Ltd v Folly: Patents County Court (Judge Birss QC sitting as a judge of the Patents County Court): 1 November 2011

The claimant company made and sold angling equipment. It used the trademark 'STALKER' (trademark 587,808) on luggage, clothing and angling apparatus (the trademark). The claimant's house mark was 'FOX'. In keeping with its house mark, it sometimes marked its goods with a composite mark, 'FOX STALKER'. The defendant sold a variety of angling equipment through the internet. He created a device mark (the device) involving the word 'Stalker' or 'Stalker Tackle', in which the 't' of 'Stalker' had been replaced with an image of an angler holding a rod. He owned two websites, stalkertackle.co.uk and stalkerclothing.co.uk, as well as an eBay site, on which he used the words 'Stalker' and 'Stalker Tackle'. The claimant brought an action against the defendant, alleging infringement of its trademark and passing off.

It fell to be determined whether the defendant had infringed the claimant's trademark under articles 9(1)(a), 9(1)(b) and 51(1)(b) of the Community Trade Mark Regulation 207/2009 (the regulation). Two issues arose: first, whether the defendant had used a sign identical to the trademark; and, secondly, whether the defendant had used the signs complained of as an indication of origin or instead in a purely descriptive sense.

The defendant contended that: (i) the marks were not similar, as his mark was 'Stalker Tackle' and the device used by the claimant was FOX STALKER; (ii) pursuant to section 51(1)(b) of the regulation, the word 'Stalker' was generic and therefore the community trademark was invalid under the regulation; and (iii) his use of 'Stalker' was descriptive and as such was not infringing. The court also gave consideration to article 12 of the regulation, which set out the defence to article 9. The claim would be allowed.

(1) It was settled law that to establish infringement under article 9(1)(a) of the regulation, six conditions had to be satisfied: (i) there had to be use of a sign by a third party; (ii) the use had to be in the course of trade; (iii) the use had to be without the consent of the proprietor; (iv) the use had to be of a sign which was identical to the trademark; (v) the use had to be in relation to goods or services which were identical to those for which the mark had been registered; and (vi) the use had to affect or be liable to affect one of the functions of the trademark (see [16] of the judgment).

With regard to infringement under article 9(1)(a) of the regulation, on the facts, the defendant's device was not identical to that of the claimant, as it used the image of a fisherman in place of the letter 't'. In the circumstances, the first four conditions for infringement under article 9(1)(a) were satisfied, and the issue was the fifth and sixth conditions, namely whether the defendant was using his device as an indication of origin or in a purely descriptive sense.

On the evidence, the defendant's websites used the word 'Stalker' in such a way as to suggest to a reader of the sites that 'Stalker' referred to the entity from which the goods in question originated. Further, on his eBay site, the juxtaposition of the device mark with the word used on its own showed to an average customer that the word was being used as a trademark, an indication of origin. Nobody looking at the defendant's eBay site would have understood that he was using the word in a descriptive sense. Accordingly, the defendant had infringed the trademark under article 9(1)(a) of the regulation and would not be entitled to a defence under article 12 of the regulation (see [50], [52]-[53] of the judgment).

The case in relation to infringement under article 9(1)(a) of the regulation had been made out (see [53] of the judgment.Hormel v Antilles [2005] ETMR 54 considered.

(2) With regard to infringement under article 9(1)(b) of the regulation, the question would be whether the defendant's signs were such as to give rise to a likelihood of confusion within the meaning of the regulation (see [54], [57] of the judgment). In the instant case, the key issue would be the defendant's use of his device in its form without the word 'Tackle', since that was the predominant way in which he had used it. In considering the average consumer's reaction to the defendant's device, it would be necessary to consider that they would look at the device as a whole and perceive it consisting of two elements: the word 'Stalker' and the image of the fisherman on it.

The mark STALKER had a reputation in the United Kingdom with buyers of angling equipment. In the instant case, the average consumer would be a person buying angling equipment, often an angler. Although the claimant's mark was not used as FOX STALKER rather than STALKER, it was the case that the relevant public would often encounter the mark STALKER in a context in which the brand Fox was present.

The average consumer familiar with the claimant's STALKER products would associate them with the mark FOX, but would also be aware that the goods were often seem marked simply as STALKER. It was doubtful that an average consumer would place significance on the absence of an indication referring to the claimant's house mark. Even if the consumer did notice the absence of FOX from the defendant's goods, the impact of that observation would not be sufficient to negate their natural assumption that the defendant's goods were from the same source as the STALKER goods.

The goods in question were identical to those for which the trademark had been registered and the defendant's device created a likelihood of confusion with the mark. It followed that the case in relation to infringement under artilce 9(1)(b) of the regulation was made out and there would be no defence under article 12 of the regulation (see [56]-[59] of the judgment).

Taking the claimant's actual reputation relating to STALKER into account would lead to a finding of infringement under article 9(1)(b) of the regulation (see [60] of the judgment).

(3) The evidence had not established a case that the mark had become a common name in the trade for the product in question as a consequence of acts or inactivity of the proprietor (see [64] of the judgment). The case under article 51(1)(b) would be rejected (see [64] of the judgment).

Hugo Cuddigan (instructed by Dickinson Dees LLP) for the claimant; The defendant appeared in person.