JULIUS SÄMANN LTD v TETROSYL LIMITED

Shape marks for air fresheners may be inherently distinctive and may acquire further distinctive character through consistent use as an indication of trade origin. In assessing infringement, the sign must be identified as presented to the average consumer, and added packaging or sales circumstances cannot cure confusing similarity in the sign itself.

Where identical goods are sold under a sign visually and conceptually similar to a highly distinctive shape mark, a likelihood of confusion may arise even without evidence of actual confusion. Protection for marks with a reputation does not require confusion, but requires a link and real detriment. A defence based on honest descriptive use fails where the use suggests a commercial connection or damages the mark without due cause. Passing off may nevertheless fail where the full circumstances of sale do not establish a misrepresentation.

The claimants owned United Kingdom and Community trade marks consisting of stylised fir-tree devices used for the Magic Tree range of vehicle air fresheners. The defendant marketed a flashing Christmas-tree air freshener under the CarPlan brand.

The claimants alleged infringement under the parallel provisions of the Trade Marks Act 1994, the Directive and the Regulation, and also alleged passing off. The defendant challenged the validity of the marks on shape, descriptiveness and genericness grounds, and relied on descriptive-use defences. The central issues were whether the tree marks were distinctive, whether the Christmas-tree sign created a likelihood of confusion or caused detriment to marks with a reputation, and whether the surrounding circumstances established passing off.

1. Distinctiveness. The Tree marks were not descriptive of the nature or quality of vehicle air fresheners. Their use on and as the shape of products, across many fragrances and forms of packaging, together with substantial sales and promotional use, had also given them acquired distinctiveness. The marks indicated the claimants’ products to the average consumer (paras [37]-[45]).
2. Infringement under Article 5(1)(b). The relevant sign was the Christmas-tree product as a composite whole, including its base and trade mark material. The court assessed the sign without relying on additional words on the box or the particular point-of-sale circumstances. Despite differences in branches, decoration, colour and wording, the sign had a marked visual and conceptual similarity to the distinctive fir-tree marks. Given the identity of the goods and the purchasing circumstances, there was a real likelihood that consumers would regard it as a Magic Tree product or Christmas version of one. The claim under the equivalent provisions therefore succeeded (paras [46]-[76]).
3. Reputation and detriment. The marks had a substantial United Kingdom reputation. Consumers were likely to establish a link between the sign and the marks, and the use would inevitably diminish the marks’ capacity to denote the claimants’ products exclusively. Tetrosyl had not shown due cause. It had no need to market a fir-tree air freshener, and the use was not honest because it suggested a commercial connection and harmed the marks’ distinctive character and repute (paras [77]-[88]).
4. Validity. The shape did not add substantial value to the goods once source significance was disregarded. Its aesthetic appeal was not materially greater than that of other air fresheners, and the price and purchasing evidence did not establish substantial value attributable to the shape itself. The marks were neither descriptive nor generic, and all validity and revocation attacks failed (paras [89]-[115]).
5. Passing off. Although the claimants had goodwill and reputation, the complete circumstances of sale, including the distinctive box and display unit, the flashing lights, the separation from ordinary air-freshener displays, the higher price and the absence of actual confusion, did not establish a misrepresentation. The passing-off claim failed (paras [116]-[118]).
6. The court concluded that the claimants had established trade mark infringement of both marks, but that the attacks on validity and the passing-off claim failed (para [119]).