French Connection Ltd & Ors v Fresh Ideas Fashion Ltd & Anor

Summary judgment is appropriate where the defendant has no real prospect of successfully defending the claim and no other compelling reason requires a trial. A case must be better than merely arguable; false, fanciful or imaginary prospects are disregarded.

Trade mark infringement may arise from an identical sign or from a similar sign used on identical goods where there is a likelihood of confusion. Passing off requires goodwill, conduct likely to cause deception or confusion, and likely or actual damage. A defendant’s honest belief that its conduct is lawful does not constitute a defence. Bare assertions of prior use, unsupported by evidence, do not ordinarily create a real prospect of defending the claim.

The claimants, companies in the French Connection group, applied for summary judgment in proceedings alleging infringement of registered Community trade marks for FCUK and French Connection, together with passing off.

The defendants had produced, possessed and sold bags bearing signs including FCUK and French Collection. They did not file evidence in response or attend the hearing. They relied on alleged advice from trading standards officers, prior use, and the resulting invalidity of the claimants’ marks.

The central issues were whether the signs infringed the registered marks, whether the conduct amounted to passing off, and whether the pleaded defences disclosed a real prospect of success.

1. Summary judgment. Under Civil Procedure Rules 1998 Part 24, the court may determine the claim where the defendant has no real prospect of successfully defending it and there is no other compelling reason for trial. The defendant must show more than a merely arguable case. The defendants had ample notice and had supplied no responsive evidence.
2. Trade mark infringement. The sign FCUK on one bag was, for practical purposes, indistinguishable from the registered mark and infringed Article 9.1(a) of the Community Trade Mark Regulation 40/94. The stylised version on the other bag raised an issue as to identity under Article 9.1(a), but was sufficiently similar to create a likelihood of confusion under Article 9.1(b). Its presentation was intended to conjure up the registered mark and would be read by consumers as FCUK.
3. The sign French Collection was not identical to French Connection, but its visual, phonetic and conceptual similarity, used on identical goods, established a likelihood of confusion under Article 9.1(b).
4. Passing off. The claimants had established substantial goodwill and reputation. The defendants’ use was calculated to cause deception and confusion by suggesting that the goods were made or sold by, or connected with, the claimants. Damage to the claimants’ business was inevitable. The elements of passing off were therefore established.
5. The defendants’ belief that they were doing nothing wrong, including any reliance on trading standards officers, was no defence. Their unsupported assertion of prior use did not disclose a real prospect of success. The proposed invalidity challenge also faced the absence of evidence that the defendants could have prevented the claimants’ use by passing off, and the apparent five-year acquiescence relied on under Article 53.2.
6. The claimants were entitled to summary judgment on both trade mark infringement and passing off.