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The risks of claiming infringement of a descriptive mark

Print publication

11/03/2015

The claimant owned five UK and Community trade marks, all featuring the word “supreme” in respect of animal foodstuffs. Its products included a muesli rabbit food featuring a cartoon character, “Russel Rabbit”; other muesli products featured other cartoon characters. The word “supreme” featured in a banner in its packaging. Since 1994, the defendant had also marketed rabbit food using the word “supreme”; its product was called “MR JOHNSON’S Supreme Rabbit Mix”. The evidence showed that the claimant did not object to the defendant’s use of the word “supreme” so long as it did not use it in a banner.

In 2012, the defendant redesigned its packaging, with the word “supreme” more to the fore. This prompted the claimant to institute infringement proceedings. In turn, the defendant counterclaimed for invalidity.

Arnold J found [1] that the claimant’s word marks were invalid save in respect of small animal food. This was because the word “supreme” was descriptive. The fact that a stylised font was used did nothing to overcome this and make the word marks distinctive. By contrast, the claimant’s ribbon marks did have some distinctive character as a result of their presentation.

Arnold J then considered whether the marks had acquired a distinctive character through use. In this regard, he found that the cartoon characters – notably Russel Rabbit and Gerty Guinea Pig – were much better known than the mark SUPREME. However, in respect of small animal food, the UK word mark had acquired a “slender” degree of distinctive character.

Arnold J went on to dismiss the infringement action. He held that the defendant’s use of the word “supreme” did not adversely affect the origin function of UK trade marks. He also found there was no likelihood of confusion between the two competing signs. In any event, even if infringement had been prima facie established, the defendant would have had defences available to it – first, that it was using the term “supreme” in a purely descriptive manner and, secondly, of honest concurrent use as the defendant had been using the mark for over 20 years without causing confusion.

The judgment was clearly a bad one for the claimant and, to compound matters, Arnold J noted that considerable costs were likely to have been incurred. The case demonstrates the risks of instituting infringement proceedings in respect of an adjectival mark and where there may be difficulties in demonstrating acquired distinctiveness. Instituting infringement proceedings (for any registered mark, be it a trade mark, patent or design) often result in a counterclaim for invalidity and the coming under scrutiny of the claimant’s own (in this case, very weak) registration.

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[1] Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch)

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