TO REGISTER OR NOT TO REGISTER
We were recently approached to advise a Mindfulness start-up on protecting its name and brand by registering Trademarks under the Trade Marks Act 1994.
There was no business plan and little finance. Even something as cost effective as registering a Trademark was out of reach.
Fortunately you can have an unregistered Trademark although proving it and stopping someone else through the Tort of Passing Off is more challenging than dealing with a registered Trademark infringement. But some comfort.
THE COMFORT FACTOR JUST GOT DOWNGRADED
It has become significantly less comfortable since AU Vodka Ltd v NE10 Vodka Ltd [2022] EWHC.
THE FACTS
AU Vodka Ltd (AU) a successful premium vodka company established 2015 had a distinctive bottle.
NE10 Vodka Ltd (NE10) established 2021 launched a vodka with a similar bottle design. AU had not registered their bottle and relied on the Tort of Passing Off and sought an injunction stopping NE10.
The Court reiterated the three tests established in Reckitt & Colman v Borden Inc [1990] (the Jiff Lemon Case) namely:
1 There must be goodwill (reputation) attaching to the AU product in the mind of the public, and
2 There must be a misrepresentation by the defendant so the public thinks it is getting the AU product, and
3 There must be damage (loss) suffered where the public confuse the product of NE10 with AU.
THE MARKER PUT DOWN
The Court found that NED10 did copy AU’s design.
On the three tests it found that 1 AU did have the required goodwill (reputation) and 2 there was an intentional misrepresentation BUT 3 there was insufficient evidence to show deception as opposed to confusion.
The application for an injunction failed so a full trial will follow. Case not over but the take away is that the Court said that there is no Tort of “copying” and for their claim to succeed AU must establish “deception”.
If this was your business what would you do at an early stage to protect sales . . ?
ALEXANDER BUSINESS LAW SOLUTIONS are lawyers for business and advise on Intellectual Property matters.