Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd & Anor

In passing-off, similarity or actual confusion is insufficient. The claimant must establish goodwill or reputation, a misrepresentation likely to lead the public to believe that the defendant’s goods or business are those of the claimant or connected with it, and damage or likely damage. Likelihood of deception is assessed overall by the court, using the evidence, common sense and its own opinion.

Under the Trade Marks Act 1994, identical use of a registered mark on identical goods infringes under section 10(1) without proof of confusion. Use with other words requires likelihood of confusion including association with the mark under section 10(2)(b). The own-name defence does not extend to an abbreviated or adapted name. A descriptive or laudatory word may acquire distinctive character through use.

Premier Luggage sued The Premier Company (UK) Ltd and its managing director for passing-off and trade mark infringement concerning the use of “Premier” and the defendant’s company name on luggage products. The defendants counterclaimed for invalidity of the registered PREMIER mark and relief concerning threats of proceedings.

The Deputy Judge in the Chancery Division found passing-off and infringement against the company, rejected the invalidity challenge, dismissed the threats claim and dismissed the claim against the managing director. The company appealed and Premier Luggage cross-appealed on the managing director’s liability. The central issues were whether the defendant’s conduct constituted misrepresentation, infringement under the Trade Marks Act 1994, and whether PREMIER had acquired distinctive character.

1. Disposition. The Court unanimously allowed the company’s appeal in relation to passing-off and infringement under section 10(2)(b) of the Trade Marks Act 1994. It dismissed the appeal concerning infringement under section 10(1), invalidity of the registration and the threats claim. The cross-appeal against the dismissal of the claim against the managing director was dismissed.
2. Passing-off. The court applied the classical trinity stated in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341: goodwill or reputation, misrepresentation and damage. The relevant question was whether the defendant’s use represented that its goods or business were those of, or connected with, the claimant. A risk of confusion alone was insufficient. Applying the approach in Neutrogena Corporation v Golden Limited [1996] RPC 473, the court considered the swing tag as a whole. The dominant feature was the PCL logo, while the company name was neither striking nor dominant. There was no convincing evidence of actual deception beyond one purchaser’s mistake. The swing tag was therefore unlikely to mislead, and passing-off was not established.
3. Trade mark infringement. Introducing sales staff as being from “Premier” amounted to infringement under section 10(1), which did not require proof of likelihood of confusion. The expressions “Premier Luggage” and “Premier Luggage Company” fell under section 10(2)(b), but the necessary likelihood of confusion had to include association with the PREMIER mark. The evidence indicated a connection with Premier Decorations rather than with the claimant’s mark. Use of the defendant’s full company name and address on the swing tags was within the own-name defence in section 11(2)(a), whereas the abbreviated verbal descriptions were not the defendant’s own name.
4. Validity. “Premier” was capable of distinguishing goods by origin, although it could have a descriptive or laudatory meaning and lacked inherent distinctive character. It could acquire distinctiveness through use. Registration was prima facie evidence of validity under section 72. The challenger therefore had to establish that the original registration was wrongly made before the burden shifted to the proprietor to prove post-registration acquired distinctiveness. The trial judge’s findings supported distinctiveness by February 1997, so the invalidity appeal failed.
5. Appellate review and personal liability. The Court accepted that an appellate court should not interfere with a trial finding on likelihood of deception without an error of principle. Here the trial judge had failed to ask whether there was any real likelihood that the swing tag would mislead, and the issue was a narrow visual question on which the appellate court was in as good a position. The approach to joint tortfeasor liability analysed in MCA Records Inc v Charly Records Limited [2001] EWCA Civ 1441 was consistent with dismissing the claim against the managing director, since the evidence did not show that he was responsible for the relevant acts.

1. Court of Appeal (Civil Division): In [2002] EWCA Civ 387, the company’s appeal was allowed in part, the cross-appeal was dismissed, specified parts of the order below were set aside, and permission to appeal to the House of Lords was refused.
2. Chancery Division, High Court: On 12 July 2000, the Deputy Judge found passing-off and trade mark infringement against the company, rejected the invalidity challenge, dismissed the threats claim and dismissed the claim against the managing director.