Legal Updates

Intellectual Property Law – Trade Mark Infringement – Passing Off – Counterclaim for Invalidity

In the case of Bignell (Trading as Just Employment (A firm)) v Just Employment Law Ltd [2007] the claimant brought proceedings against the defendant company for infringing its registered trade mark “JUST EMPLOYMENT”. The claim was dismissed and the defendant's counter claim for a declaration of invalidity was allowed on the basis that the trade mark should not have been registered because it lacked inherent distinctiveness.

According to s.47(1) of the Trade Marks Act 1994:

'(1) The registration of a trade mark may be declared invalid on he ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered'.

According to s.3 of the Trade Marks Act 1994, so far as material:

'(1) The following shall not be registered: …

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality ... or other characteristics of goods or services'.

The claimant in this case was the sole principal of a solicitor's practice in Guildford, Surrey practising under the registered trade mark “JUST EMPLOYMENT” (“the Trade Mark”). The claimant gave advice on employment law and represented clients before employment tribunals. The defendant was a company based in Glasgow trading under the name “JUST EMPLOYMENT LAW LIMITED”.

The defendant's business also provided legal advice and representation in the field of employment. The claimant therefore commenced proceedings against the defendant alleging trade mark infringement and passing off. However, the defendant counterclaimed for a declaration of invalidity under s.47 of the Trade Marks Act 1994.

The issues which had to be decided by the court, in relation to the trade mark infringement claim, were as follows:

• Whether the Trade Mark lacked inherent distinctiveness; and
• If it lacked inherent distinctiveness, whether it had acquired distinctiveness through use subsequent to registration.

The issues in relation to the passing off claim were:

• The extent of the claimant's reputation or goodwill under the Trade Mark;
• Whether or not the use by the defendant of its corporate name involved a misrepresentation to clients or potential clients that the defendant's services were those of or were connected to the claimant's; and
• Whether the claimant had suffered (or was likely to suffer) damage by reason of an incorrect belief that the defendant’s business was or had been connected to the claimant.

The claim was dismissed by the court and the counterclaim was allowed.

The court held that it was well established that where a name consisted of ordinary words of the English language, the law adopted a cautious approach whether in relation to trade mark registration or in relation to allegations of passing off.

• Firstly, the court felt that on the evidence, the Trade Mark should not have been registered because it lacked inherent distinctiveness. Furthermore, the Trade Mark had not acquired distinctiveness through subsequent use.
• Secondly, in the circumstances of the case, the claim in passing off failed on the basis of the factual position. The claimant and his practice had no presence and were deemed to be completely unknown in most parts of the country. In areas where they were unknown the claimant owned no goodwill in the Trade Mark.

It was further held that the confusion which had occurred in this case was not as a consequence of any implicit misrepresentation by the defendant. There was no evidence that the claimant had suffered any damage at all from the close similarity of the names. Accordingly, the defendant did not represent a serious threat to the claimant.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.