D Green & Company (Stoke Newington) & Plastico Ltd v Regalzone Ltd

Whether use of a registered mark is infringing depends on how the use would be understood objectively in its context. The relevant perspective is that of the average recipient in the relevant trade, who is reasonably well informed, observant and circumspect.

A registered mark may have a hybrid quality. It may be distinctive in some contexts but descriptive in others. Use of the mark to describe the kind, intended purpose or other characteristics of goods is not infringing merely because the mark is registered, provided the statutory conditions are met. Context, including product descriptions, supplier references and surrounding correspondence, is decisive.

D Green & Company (Stoke Newington) Limited and Plastico Limited sued Regalzone Limited for infringement of the registered trade mark SPORK and passing off. Mr Justice Neuberger upheld the mark, found trade mark use in price lists and correspondence, granted injunctions and ordered an inquiry as to damages.

Regalzone appealed on the issue whether its use of “spork” was non-trade mark use. The disputed uses occurred in 1993 price lists and 1995 correspondence with a customer. The central issue was whether those uses would objectively indicate a connection with Plastico, rather than describe a combined spoon-and-fork product supplied by another manufacturer.

1. Appeal allowed. The use of “spork” in the 1993 price lists and 1995 correspondence was not infringing use under section 4(1)(a) of the Trade Marks Act 1938. The passing-off claim consequently failed, no contrary argument of force having been advanced.
2. The statutory question was objective. The court had to ask whether the use would be taken as trade mark use by the average recipient, namely a trade purchaser of disposable catering products who was reasonably well informed, observant and circumspect. The subjective understanding of the actual recipient was not determinative.
3. “Spork” had acquired a generic or descriptive meaning to an extent. In the price lists, the item was identified as a Master Plastics product, and the surrounding presentation showed that it was not being represented as a Plastico product. A reasonably informed trade purchaser would understand the term descriptively.
4. The same conclusion applied to the correspondence. The customer used “spork” descriptively when seeking information about an item identified by a sample. Regalzone used the term in composite expressions such as “snack spoons (sporks)” and “Snack Fork (spork)”, confirming that it regarded the terms as interchangeable descriptions.
5. The court considered that the same approach would produce the same result under section 11(2)(b) of the Trade Marks Act 1994. That provision requires the court to distinguish distinctive from descriptive use in context, including where the registered mark is semi-descriptive. The court also endorsed the view that the whole context must be considered, while declining to accept any general rule that descriptive-use protection is unavailable for a registered semi-descriptive mark.
6. Lady Justice Arden and Sir Martin Nourse agreed with Lord Justice Chadwick. Lady Justice Arden expressed no concluded view on provisions of the 1994 Act that did not arise for decision.

• Court of Appeal (Civil Division): allowed Regalzone’s appeal from the order of Mr Justice Neuberger dated 13 July 1999.
• Chancery Division: upheld the validity of SPORK, found infringement and passing off, granted injunctions and ordered an inquiry as to damages.