A case of unfulfilled potential

The best result for a client is invariably satisfactory settlement of a claim – even at the doors of the court – rather than a fully contested action.

From the lawyer's point of view, however, such an outcome can result in a hearing that may have clarified an important legal point being thwarted.

This appears to have been the case in a recently settled trade mark action in which the John Lewis Partnership took on Italian fashion manufacturer Gruppo La Perla and its UK distributor, Hornvale.

In intellectual property circles, it had been anticipated that a definitive judgment in the case – brought by John Lewis over Gruppo La Perla's use of the name 'Joelle' on a range of nightdresses marketed in the UK – could have given an important judicial signpost in relation to the distinction necessary between names under provisions of the Trade Marks Act 1994.

John Lewis, represented by Lovell White Durrant, launched its action 18 months ago after it discovered Gruppo La Perla products being marketed in the UK under the 'Joelle' label. Plans for use of the name came to light as a result of moves to register the name 'Joelle' in the UK.

Had the case gone ahead – it was scheduled to begin before Mr Justice Lloyd in the Chancery Division on October 21 – Christopher Morcom QC would have argued on behalf of John Lewis that use of the name 'Joelle' amounted to infringement under the provisions of the 1994 Act of their own in-house mark 'Jonelle.'

However, almost at the doors of the court, on October 18 a settlement was reached. Under the terms, Gruppo la Perla and Hornvale agreed not to infringe the 'Jonelle' mark. They have six months to sell off existing stock and must also foot John Lewis's legal costs.

From the point of view of John Lewis the result was a satisfactory outcome and its name 'Jonelle' has been protected. But, from the point of view of intellectual property lawyers such as Lovell White Durrant partner Nicholas Macfarlane, who masterminded the action for John Lewis, the case will not now result in the anticipated, and in IP circles much-needed, ruling on how much distinction there needs to be between two similar names under the provisions of the 1994 Act.

"We had been hoping that this would be the case that was going to give guidance from the High Court bench on the provisions of the Act relating to names that tend to be similar," says Macfarlane.

"It would have been very interesting to hear what the court said about this point and how they viewed the test we have for similarity.

"As it is we are still left with the problem that we have no ruling from the court to give guidance on what might be regarded as confusingly similar enough in circumstances such as these.

"We still need a court decision at some stage in the future on this point to give a lead to practitioners that will enable them to form judgments backed by case law on where the law stands on the rules about this area of infringement."

But Macfarlane added: "We are of course delighted for our clients that effectively this case has ended so satisfactorily for them without the need for a fully contested battle."