31 August 2014

Who's Pink - Thomas Pink or Victoria's Secret?

In Thomas Pink Limited v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch) (31 July 2014) Mr Justice Birss had to resolve a dispute between two well known retailers. The claimant was Thomas Pink which had started life as a specialist shirt maker in Jeremyn Street. It is now part of the LVMH Group the interests of which range from champagne to fashion.

The defendant was Victoria's Secret UK which is best known for its bras and knickers particularly in the US where it began.

Both retailers are diversifying their businesses.  Thomas Pink's website has a section for "Women" after "New Collection", "Men", "Shirts", "Ties" and "Accessories" while Victoria's Secret is moving into women's clothing generally.

The Dispute
The battle arose over the right to use the word "Pink" as a brand. According to Wikipedia the claimant was named after Thomas Pink, an 18th-century tailor, who made the hunting coats worn by Masters of Foxhounds, whippers-in and huntsmen which are still called hunting pink even though they are actually scarlet in colour. The defendant has launched a new brand in the USA called Pink aimed principally at young women of college age which it wished to bring to Europe. To promote the PINK brand Victoria's Secret had opened a number of shops in the UK under that sign. In his judgment Mr Justice Birss exhibited photographs of one of the claimant's shops (top left) and one of the defendant's to the right.

Thomas Pink's Trade Marks
The claimant had registered the following Community and British trade marks:
  • EU 3,949,906 for a range of goods in classes 3, 14, 18, 25, 26 and 35; and 
  • UK 2,565,078 for a range of goods in classes 14, 18, 25 and 36.
It claimed sales under the sign PINK of between £23 and £28 million in the UK (and between £2 and £4 million in the rest of the UK) every year between 2005 and 2012 through its 35 outlets in the UK, its 2 in France and its further 2 in the Republic of Ireland.

The Issues
The claimant sued for infringement of its Community trade mark ("CTM") under art 9 (1) (b) and (c) of the Community Trade Mark Regulation and s.10 (2) and (3) of the Trade Marks Act 1994 and passing off. The defendant counterclaimed for the revocation of the CTM in relation to some of the specified goods on grounds of non-use and invalidation of the British mark on the ground that it was not distinctive.

The Counterclaim
The judge found that both the Community and British trade marks were valid. He held that the CTM had been put to genuine use for most of the goods for which it had been registered.  Though he decided that the British trade mark was not inherently distinctive at the time of registration he held that it had acquired distinctiveness through use. 

Trade Mark Infringement
Mr Justice Birss found that the defendant had infringed the claimant's Community and British trade marks under both art 9 (1) (b) and (c) and s.10 (2) and (3).

Art 9 (1) (b) and s.10 (2)
In determining whether the defendant had infringed the CTM under art 9 (1) (b) and the British mark under 10 (2) the judge considered the following factors:
"i) Average consumer
ii) Comparison between the goods or services
iii) What sign has the defendant used?
iv) Context of the use
v) Distinctiveness of the registered marks
vi) Evidence of actual confusion?
vii) Comparison between the registered marks and the signs
viii) Conclusions on likelihood of confusion."
At paragraph [117] he said:
"The likelihood of confusion is assessed from the perspective of the average consumer of the goods or services in question. The average consumer is always deemed to be reasonably well informed, observant and circumspect although his or her level of attention may vary depending upon the nature of the goods or services in question and how they are acquired. The average consumer is not a single person but represents a distribution of consumers; see the review of the law in this area by Arnold J in Jack Wills v House of Fraser [2014] EWHC 110 (Ch), paragraphs 63-65. Referring to Interflora v Marks & Spencer [2012] EWCA 1501 (Civ) the defendant emphasised that the average consumer test is normative and it falls to be applied objectively by the judge from the perspective of the relevant construct."
In this case the average consumer was a consumer of clothing and his lordship held that such a consumer has the following characteristics:
"i) The average consumer represents a spectrum of consumers who are from different backgrounds and shop in different ways; some will be tourists, others will be locals to an area, some will shop for themselves, and others will be buying a gift for someone else.ii) Although many consumers of clothing are very brand conscious that does not apply to all consumers. In my judgment the average consumer will exercise a moderate degree of attention to branding but will not scrutinise the fine print of swing tags and labels.
iii) Consumers of clothing vary enormously in their tastes and their means. At times in the argument the defendant appeared to be advancing a case which divided the average consumer into a consumer of low end clothing (who might buy the defendant's products) and a consumer of luxury clothing (who might buy the claimant's products). The extent to which this may be relevant to passing off is something which would only be relevant to that claim, but in relation to the question of registered trademark infringement for a mark registered for clothing it is not relevant. The average consumer represents consumers at all levels of the market.
iv) The average consumer represents both male and female consumers. In addition both sexes will buy products for themselves and for members of the opposite sex as presents.
v) Consumers of clothing shop in different contexts, sometimes people set out to buy a particular thing or to buy something for a particular occasion, but in other circumstances shopping is an end in itself and the consumer is simply browsing. As the claimant submitted, this is evidenced in large shopping malls such as Westfield or Bluewater or at a famous department store where shoppers might go and "have a wander" or perhaps drop into a shop which catches their eye.
vi) Where the average consumer shops in retail stores, he or she is likely to be drawn inside based on material visible from the exterior of the store including signage and promotions and in particular the name of the store and anything in the windows.
vii) Consumers come to expect that a shop front for example on a street or in a shopping centre represents a single store. Two shop fronts, even if adjacent, are not without some other indication going to be assumed to be linked to each other."
He then proceeded with the comparison of registered marks and signs and specified goods and goods for which the signs were used from the perspective of the average consumer and concluded that the use of the sign PINK as a label on clothing, at the point of sale, in promotional literature and on shop front fascias gave rise to a likelihood of confusion.

Art 9 (1) (c) and s.10 (3)
As for the claim under art 9 (1) (c) and s.10 (3) the judge considered the following factors:
"i) Reputation
ii) Link
iii) Due cause
iv) Detriment"
Since the defendant admitted that the claimant had a reputation at least in shirts. a link had been established for the claim under art 9 (1) (b) and s.10 (2) and detriment flowed from the link, the battle focused on due cause. The defendant argued it had used PINK in the USA for many years in essentially the same way it now sought to do in the UK and EU. It had due cause to use PINK in that way here because that activity was simply a natural extension of its substantial activities in the USA. It was not seeking to take advantage of Thomas Pink's rights. The goods it sold are distinct from the goods sold by the claimant. Although there had been a complaint by Thomas Pink in the USA some years ago there had now been co-existence there for a number of years and no evidence of confusion in the USA exists. Its US websites and catalogues have also made consumers here aware both of VICTORIA'S SECRET itself and PINK in particular.

Mr Justice Birss was not impressed. He said at paragraph [198]:
"The corporate group of which the defendant is a part has used PINK in the USA for many years in essentially the same way it now seeks to do in the UK and EU. From the defendant's point of view the activity complained of in this case is a natural extension of its substantial activities in the USA. It is not deliberately seeking to take advantage of Thomas Pink's reputation but the defendant did not pause to consider what the claimant's European or UK trade mark rights actually were before it launched here. It simply went ahead."
The Judge concluded "that the premise on which the defendant decided to enter the European market was adopted in good faith but it was wrong. A reasonable business knowing what the defendant knows now would not continue to act in this way."

Passing off
As the claimant had succeeded on trade mark infringement the judge did not consider that he needed to consider the case in passing off and decided not to do so.

As we have come to expect from Sir Colin since he was first appointed to the circuit bench some 4 years ago there is a lot of meat in his judgments and I have chosen to chew on some of the choicest bits. To my mind his formulation of the factors to be considered when making a similar signs and similar goods comparison has much to commend it and is an improvement on the formulation based exclusively on CJEU cases that are relied upon by hearing officers in our Trade Marks Registry. I found his identification of the average consumer particularly helpful. I also found his approach to the question of whether the defendant had due cause helpful. But this is a very long judgment and there is much in the transcript that I did not discuss for reasons of space which merits reading.

Should anyone wish to discuss this fascinating case or trade marks in general they are welcome to call me on 020 7404 5252 during normal office hours. They can also message me through my contact form, tweet me, write on my wall or message me through G+ and Linkedin at any other time.

07 August 2014

Monkey Business - copyright in a photo where the shutter is operated by an animal

Can a monkey own copyright? Clearly not. At least not in England in at any rate for two reasons. First, a photograph is an artistic work (see s.4 (1) (a) of the Copyright Designs and Patents Act 1988 ("CDPA")) and s.1 (1) (a) makes clear that copyright subsists in an artistic work only if it is original. Now the threshold for originality is very high but it does connote independent skill and labour which goes beyond monkeying around with a smart phone button. Even if the monkeying is done by a human being. Indeed even if it is done by a photographer. The other reason is that s.1 (3) provides that
"Copyright does not subsist in a work unless the requirements of this Part with respect to qualification for copyright protection are met (see section 153 and the provisions referred to there)."
Well those qualifications relate to nationality, residence and incorporation. Monkeys just don;t meet any of those criteria.

What about the camera or smart phone owner? If the monkey put its paw through a car window and grabs the device which I have seen happen in Gibraltar (where my learned friend Mr David Hughes sometimes hangs out) I don't think there will have been any expenditure of skill or labour and certainly not enough to give the camera owner copyright.

But if you set up the camera and train the monkey as Mr David Slater claims to have done (see "British photographer in Wikipedia monkey selfie row" 7 Aug 2014 BBC website) it may be different,  Slater might find some support from the decision of His Honour Judge Birss QC (as he then was) in Temple Island Collections Ltd v New English Teas Ltd and another [2012] EWPCC 1 (12 Jan 2012) (see my note "Copyright in Photographs: Temple Island Collections and Creation Records" 15 Jan 2011).

According to press reports Slater claims to have lost £10,000 from the reproduction of the photo without his permission. That would just bring him within the jurisdiction of the small claims track of the Intellectual Property Enterprise Court (see "The New Small IP Claims Jurisdiction" 5 March 2012) where the amount of costs that one party can recover from another are limited to a few hundred pounds.  The procedure is designed for litigants in person and the judge has the same power to grant an injunction at the end of the hearing as any other.  If I were Mr Slater I'd be sorely tempted to give it a go.

03 August 2014

Ifejika v Ifejika - another case about design rights and contact lenses

In Ifejika v Ifejika and another [2011] EWPCC 31 (23 Nov 2011) His Honour Judge Birss QC (as he then was) ordered among other things an inquiry (or alternatively, by implication, an account) in relation to a lens care product the design rights in which he held to have been infringed by the claimant's brother by of a competing product. The claimant elected an account of profits and this came on before HH Judge Hacon on 17 June 2014 (Ifejika v Ifejika and another [2014] EWHC 2625 (IPEC) (31 July 2014)).

This case is interesting for two reasons. First, it was an account of profits rather than an inquiry as to damages. Accounts are not common in intellectual property cases. Secondly, neither side was legally represented at the hearing so the judge had to do justice as best he could. He was therefore bound to explain the principles by which an account is to be taken.

A factor that might have applied in other circumstances was that the defendant could have applied for a licence of right under s.237  of the Copyright, Designs and Patents Act 1988 which would have limited his liability to twice the amount payable by way of licence fees (see s.239 (1) (c) of the Act). In this case it made no difference because the judge did not think there was a realistic prospect that the Comptroller would settle a licence at less than 1% of the net profits made from the sales of the infringing products.

In computing the sums payable by the defendant His Honour considered the extent of the infringement. Only one feature of the claimant's design had been infringed and the parties disputed whether that feature was an important part of the product. The defendant argued that the feature was "physically a very modest part of the totality" of the product and suggested that the correct proportion of net profits to be attributed to that feature was 1%. The claimant described the feature as the "central hub" of the design and rejected the 1% figure without suggesting an alternative. The judge took a broad brush approach:
"32. I accept [the claimant's] implied submission that it is not appropriate to assess the proportion of profits to be attributed to the undercut feature solely by its physical proportion to the whole, which is in any event hard to gauge. Its functional importance is relevant. But I am not in a position to assess in detail whether it is, as [the claimant] submitted, a key functional feature or whether, as [the defendant] submitted, it plays a marginal role.
33. I have come to the view that the figure of 2% of net profits is about right on the basis that I doubt that the undercut feature is quite as insignificant as [the defendant] suggests, but as best as I can judge, more than doubling [the defendant's] figure of 1% would be going too far in allotting importance to the feature. That means that the relevant profit made by [the defendant] from the sale of the infringing .... products was 2% of £790,000, which is £15,800."
He thus ordered the defendant to pay £15,800 to his brother.

This decision should put an end to litigation that has rumbled on since 2008. Judge Birss QC set out the history in Ifejika v Ifejika and another [2011] EWPCC 28 (6 Oct 2011) when he heard an application to adjourn the trial:
"The case began in the High Court on 21st February 2008. The case came before HHJ Fysh QC sitting as a judge of the High Court in 2009 and in a judgment in October 2009 HHJ Fysh cancelled the Registered Design. Victor Ifejika appealed and his appeal was successful. The Court of Appeal reinstated the Registered Design (see the judgment of Maurice Kay, Rix and Patten LJJ [2010] EWCA Civ 563). The matter then proceeded in the High Court (Patents Court). Mr Justice Floyd transferred the matter to the Patents County Court in early 2011. The case first came before me on 10th March 2011. On that occasion I heard Victor Ifejika and Charles Ifejika in person. Charles Ifejika represents himself and (with permission) the second defendant. I asked the parties about their estimates of the potential magnitude of damages at stake. Both Victor Ifejika and Charles Ifejika were of the view that the likely damages in relation to the Lenscare product are of the order of £35. As regards the AMO product, Charles Ifejika's position is that the likely damages (if the case against him is proven, which of course he denies) may be of the order of £25,000. Victor Ifejika's position on the AMO product is that the likely damages may be of the order of £500,000."
In fact that £25,000 was an overestimate by nearly £10,000. One wonders what the parties could have achieved had they applied their energies to their respective businesses instead of fighting each other.