Trademark regulations strengthened

Roger Pearson reports on a trademark and passing off case which is set to have a major impact on intellectual property law

A new name has joined other major companies at the top of the intellectual property and trademark case history list.

Montblanc, the quality pen manufacturer – its top models sell for up to £8,000 with the cheapest at £65 – has just scored a major victory in a trademark and passing off action against a Taiwanese company. Sepia Products sought to market Montblanc lookalikes in the UK and the products would have sold for between £1.50 and £100.

Judgment was given on 1 December in the case of Montblanc Simplo GmbH v Sepia Products. The case concerned a dispute over the distinctive white, five-pointed star-shaped “snowcap” trademark which is on the top of all Montblanc pens.

Montblanc took Taiwanese pen manufacturer Sepia to court claiming Sepia had infringed the “snowcap” trademark by producing a pen which showed a near identical “snowcap” on the top of its pens.

But now the High Court, which earlier this year issued a temporary injunction banning sale of the offending pens from the Far East, has made the ban permanent.

In siding with Montblanc, Judge Boggis QC said he considered that it was “a plain case” of passing off.

He said that the “snowcap” was as well known to the pen-buying public as the company name and that people could think that when they bought a Sepia pen they were buying a Montblanc, but at a lower than normal price.

Judge Boggis said: “There is in my judgment, clearly an infringement of the trademark, or there would be if Sepia were allowed to trade with this sign in this country.”

Montblanc, which has used the trademark for 70 years, was represented by Dawn Osborne, a partner at IP rights specialist Willoughby & Partners, and Philip Roberts of 1 Essex Court chambers.

Osborne believes one of the most important aspects of the case is the fact that Judge Boggis made his decision even though he had no indication of the impact the sale of Sepia pens would have on Montblanc.

Osborne says: “In other major passing off cases the products have all been on the market and the impact could be tested.

“But in this one we got an interim injunction to stop it before it ever got on to the market.

“The way the mark was being used on the end of the pen was thought by the judge to be confusing.”

Sepia argued that no one would be confused because its pens were cheaper.

But Osborne says: “If that argument had succeeded it would enable anyone to rip off Nike or Adidas’ trademark, or anyone’s, just simply by pricing their products so cheaply that their argument was that anyone would know their product was fake.

“The judge took the view that people might think Montblanc had gone deliberately down market to try and catch the lower end. He said he considered that the public would think that Sepia’s products were in fact Montblanc goods and that a Montblanc pen could be obtained at a cheaper price.”