On Friday 26th July 2013 Mr Justice Vos, sitting in the PCC, delivered a detailed judgment which is a stark reminder to traders not to “turn a blind eye” to competitors. In a complex case, in which the papers filled 17 lever arch files, the judge complimented counsel for managing to remain within the 2 day allocated time frame for this PCC matter. Although there was plenty of legal argument, the case ultimately turned on facts. Who was doing what, when, who knew what, when, and what they ought to have done about it.
Both parties claimed rights in the name FROST as a trade mark applied to luxury washroom products. The Claimant was a long established Canadian trader with a CTM for “FROST”, for which it had applied in October 2008. The Defendant was a long established UK family firm company, established by Mr F. C Frost some 40 years or so ago. Trading in a niche market area and well known amongst leading architects and other professionals, the Defendant was known under its simplified name of “Frost”.
Although the Claimant had been first past the post in seeking and obtaining registered trade mark rights, they failed in their claims of infringement and their challenges to 8 of the Defendant’s UK registered marks, because the Claimant had paid insufficient heed to the Defendant’s prior rights. The Claimant’s main director, Mr Biggar, failed to convince the court that the Claimant had not acted in bad faith at the time of the CTM application; Vos J thus found that the Claimant’s mark was invalid (as set out in the judgment at paras. 127-137). The Claimant ought to have taken into proper account the pre-existing rights of the Defendant, which they entirely failed to do. Moreover, the Defendant’s perfectly legitimate trade under and by reference to their own name, provided a free-standing defence to the claims of infringement. Following the precedent set by Arnold J in the Cipriani case in particular, Vos J accepted evidence of trading style and informal name use rather than pinning the Defendant to its corporate style of appellation.
An important lesson to anyone contemplating making UK or CTM applications – if they know of others who may have an existing interest in the same or similar names or marks, don’t just ignore them. Otherwise said UK or CTM applicant may run the risk of falling foul of the bad faith ground at a later stage.
IPcopy 14 August 2013
(with a shout-out to Katherine Moggridge, Pupil Barrister at Three New Square Intellectual Property for the heads-up on the above case)