A recent case before the English Court of Appeal (Premier Luggage and Bags v. The Premier Company (UK)) has shown the limits that can be placed on the owners of UK trade mark registrations in the interests of competition.
The claimant, Premier Luggage, had sold Premier branded luggage in the UK from 1985 onwards. In 1997 they obtained a UK trade mark registration for Premier in respect of a wide variety of goods in Class 18. The application was accepted on the basis of evidence of acquired distinctiveness.
The defendant, The Premier Company (UK) (Premier UK), was an off-shoot of a UK company, Premier Decorations that had established a reputation amongst major UK retailers for the supply of Christmas decorations and the like. The controlling interests in Premier Decorations decided to expand into the UK luggage and travel goods market and to use The Premier Company (UK) for this purpose. They therefore began selling luggage in the UK at the end of 1996 under the PCL brand. The swing tags, brochures, etc. for these products bore the mark PCL as well as the full company name of the supplier, The Premier Company (UK) Limited. Salesmen for the PCL products approached the existing retail contacts of Premier Decorations in order to introduce their new luggage business. In doing so, they referred to themselves as from Premier, Premier Luggage or Premier Luggage Company.
Premier Luggage sued Premier UK for trade mark infringement and passing off. In response Premier UK applied to cancel the claimant's UK trade mark registration for Premier. The Judge (Mr Etherton QC) ruled as follows:
On the evidence, the trade mark registration for Premier was valid and enforceable.
The claimant had established the classic trinity of reputation (or goodwill) in the trade mark Premier, misrepresentation by the defendant leading to confusion (or deception) and resulting damage. The passing off claim therefore succeeded.
The oral use of Premier by the defendant was trade mark infringement under Section 10(1) of the 1994 Act (identical mark/identical goods).
The oral use of Premier Luggage and Premier Luggage Company by the defendant was trade mark infringement under Section 10(2)(b) of the Act (similar mark/identical goods).
Since the use of Premier by the defendant amounted to passing off, it would not be in accordance with honest practices and therefore they could not rely on the own name defence under Section 11(2)(a) of the 1994 Act. Further, there was...