Litigation Litigator's view 05/03/96

In a recent decision, Justice Jacob sent a message to trade mark proprietors: do not try to monopolise ordinary words of the English language.

British Sugar v James Robertson & Sons was the second action to come to trial under the Trade Marks Act 1994. This action was over the trade mark 'Treat' registered by British Sugar for dessert sauces and syrups. The syrups come in squeezable bottles for pouring over desserts which bear the Silver Spoon mark.

British Sugar objected to the launch by James Robertson & Sons of a toffee flavoured spread called Robertson's Toffee Treat. This comes in an oval jar and is intended to compete with sweet spreads.

The speed with which this action went through the courts is commendable. The writ was issued in September 1995; in October, Justice Laddie refused to grant British Sugar an interlocutory injunction but ordered a trial, which took place in January 1996.

The most striking part of Justice Jacob's lengthy and detailed judgment is his clear aversion to unjustified monopolies. Not only did he decide Robertsons did not infringe Treat but also that this registration was invalid. Furthermore, as Robertsons was using Treat adjectively, it had a defence to infringement.

Justice Jacob set out a logical and practical test to apply to the question of similar goods. He demonstrated that similarity is a relatively narrow concept and consequently trade mark proprietors are not to be given more protection than is justified.

In considering validity, he made it clear that a trade mark needs to be recognised by the public as a "reliable badge of trade origin" and use alone does not necessarily make it distinctive. As a result trade mark proprietors seeking to bring infringement proceedings over common, descriptive or laudatory marks now do so at the risk of loosing their whole registration.

Such a drastic consequence is not one to be viewed lightly. In the long-term the Trade Mark Registry may become more scrupulous in allowing such marks onto the register, but in the meantime further decisions from the English courts on this issue seem inevitable.