Fields v Klaus Kobec Ltd & Anor

Use of a sign is assessed by comparing the sign with the registered mark as a whole. Additional words may be ignored where they have no trade mark significance, but distinctive additions may make the sign similar rather than identical.

The statutory own name defence is available to a company. It depends on whether the use is objectively in accordance with honest practices in industrial or commercial matters, assessed in all the circumstances and by asking whether the user acted fairly towards the legitimate interests of the trade mark proprietor.

Bad faith in applying for registration involves a mental state assessed by reference to the applicant’s knowledge and proper standards of honesty. The registration was not invalid where the applicant genuinely believed that he was entitled to register the mark.

The claimant owned United Kingdom and Community trade mark registrations for KLAUS KOBEC in relation to watches. He alleged that the defendants had infringed those marks by using the name and related domain names, by selling watches bearing the name, and by threatening further use after consent had been withdrawn.

The second defendant, the managing director and controlling force of the first defendant, relied on the earlier-right and own-name defences. He also counterclaimed for invalidity of the registrations, alleging an earlier passing-off right and bad faith. The first defendant had entered administration and had settled with the claimant.

The issues were whether the pleaded acts constituted infringement, whether either statutory defence applied, and whether the registrations were invalid.

1. Infringement. The addition of “Limited” to the company name did not alter the trade mark identity. Similarly, “.com” had no trade mark significance. Because KLAUS KOBEC was highly distinctive, the elision and lower case lettering in klauskobec.com did not prevent identity. The additions “football” and “rugby”, however, were significant and made those signs similar rather than identical. The claim based on use of those signs under section 10(1) therefore failed.
2. The defendants had infringed by using the mark in the klauskobec.com domain name after consent was withdrawn and by threatening future use. Limited use of the company name and of the name on watch backplates was established, but remained subject to the statutory defences.
3. Earlier right. The defence under section 11(3) of the Trade Marks Act 1994 was not made out. At the relevant filing date, the predecessor’s use had generated insufficient goodwill to found passing off. Its use also derived from watches supplied by the claimant or his companies. In any event, the evidence did not establish a right confined to a particular locality.
4. Own name. The defence under section 11(2)(a) was available to a company. Applying Reed Executive plc v Reed Business Information Ltd and Gerolsteiner v Putsch, the court applied an objective assessment of all the circumstances. Use of the company name on watch backplates and in correspondence addresses was honest because it reflected genuine requirements imposed by football-club licences and followed a substantial rebranding exercise. Continued trading through klauskobec.com, however, was objectively inconsistent with honest practices and unfair to the claimant.
5. Validity. The challenges under sections 47(2)(b), 5(4) and 3(6) of the Trade Marks Act 1994, and the corresponding provisions of Council Regulation 40/94, failed. There was no earlier right capable of preventing registration. Applying Harrisons TM Application (“China White”), with the test derived from Twinsectra Ltd v Yardley, the claimant had applied in good faith and his knowledge would not have caused the applications to be regarded as dishonest by persons applying proper standards.
6. The counterclaim was dismissed. The court was to hear counsel on the appropriate form of order.

First-instance judgment. No earlier appellate decision is stated in the judgment.