The recent case of Wistbray Ltd v Creative Nature Ltd (2005) emphasizes that the Court will look at the overall impression of a sign to determine whether it infringes a registered trademark.
Section 10 of the Trade Marks Act 1994 provides, to the extent material: ‘(2) A person infringes a registered trademark if he uses in the course of a commercial transaction a sign when (b) the sign is similar to trade mark and is used in connection with goods or services identical or similar to those for which the mark is registered, there is a risk of confusion on the part of the public, which includes the risk of association with the mark”.
The claimant company, Wistbray Ltd, was the registered owner of a UK registered trade mark, ‘DRAGONFLY’, in Class 30 in respect of teas. He was also the registered owner of a European Community registered trademark for ‘DRAGONFLY’, combined with a logo of a silhouetted dragonfly in Class 30 in respect of teas. Wistbray had been using the trademarks for the sale of teas since September 2000 and had an annual turnover of around £1 million.
Creative Nature, a UK company, traded incense, crafts and herbal teas. Only a very small proportion of its sales were of Class 30 teas. Creative Nature used a banner comprising a pictorial representation of a dragonfly in flight with the words ‘CREATIVE NATURE’.
Wistbray claimed that Creative’s use of his sign infringed both of his trademarks, suing for infringement under section 10(2)(b) of the Trade Marks Act 1994 and seeking summary judgment.
The court held that: plaintiff’s use of the marks was widespread and longstanding;
the claimant’s markings, both as an expression and as a pictorial symbol for use in teas, were distinctive and memorable;
the fact that defendant’s teas were largely medicinal and sold in specialist outlets did not eliminate the likelihood of confusion;
the likelihood of confusion between marks must be assessed globally, taking into account all relevant factors of the case;
the overall assessment must be based on the overall impression given by the marks, taking into account their distinctive and dominant components;
in the present case it was satisfied that the defendant’s sign was similar to the plaintiff’s trademarks, the defendant’s products were similar to the plaintiff’s, and the result was at least a likelihood of confusion on the part of the public.
The court granted an injunction restricting the defendant’s use of the mark.
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© RT COOPERS, 2005. This Information Note does not provide a comprehensive or complete statement of the law relating to the subjects discussed nor does it constitute legal advice. Its sole purpose is to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.