Lyle & Scott Ltd v Primark Stores Ltd

On an interlocutory injunction application, evidence must be relevant to an issue that remains for decision. Where each party has an arguable case and the defendant does not contend that the claimant has no arguable case, additional survey evidence directed only to confusion may have no weight on the balance of convenience and may properly be excluded.

Identity under Article 9.1(a) requires strict comparison, subject only to a limited relaxation for differences which an average consumer might overlook. At the interim stage, the court should assess the balance of convenience, including the status quo, the nature and quantifiability of each party’s loss, and the practical consequences of restraining an established business.

Lyle & Scott sought an interim injunction restraining Primark from selling clothing, footwear or headgear bearing eagle devices alleged to infringe Community trade marks. The claim was advanced under Article 9.1(a), (b) and (c) of Council Regulation 40/94.

A preliminary issue concerned the admissibility of further evidence from Primark’s approaches to purchasers about possible confusion. The substantive interim issue was whether the evidence and the competing risks justified an injunction pending trial.

1. The court excluded the additional purchaser-response evidence. Primark accepted that it was not arguing that Lyle & Scott had no arguable case. The evidence therefore did not assist on the balance of convenience. It was also untested and would be expensive to answer. The court distinguished O2 Holdings Limited v Hutchinson [2006] RPC 30, which involved a trial, non-compliance with an earlier order and purported expert evidence not complying with Part 35. It did not treat that decision as laying down a universal rule. PepsiCo [2006] ETMR 63 was materially different because it concerned an experiment involving different stimuli.

2. For Article 9.1(a), strict identity requires the sign and mark to be the same in all respects, subject to the limited qualification that insignificant differences may go unnoticed by an average consumer. The court considered Sadas [2003] FSR 34 608 and the discussion in Reed Executive plc v Reed Business Information Ltd [2004] RPC 40. The differences between the four Primark devices and the registered marks might exceed the limited relaxation, so Primark had an arguable case as well as Lyle & Scott.

3. Both parties had serious questions to be tried under Article 9.1(a), (b) and (c). The question therefore became the balance of convenience. The court considered the possibility of irreparable or unquantifiable loss on both sides, the parties’ ability to pay damages, the likely gap before trial and the status quo. Applying the guidance in American Cyanamid, preserving an established enterprise was an important consideration.

4. The status quo favoured Primark. Large quantities of eagle-bearing goods had been sold since 2005, while Lyle & Scott had produced no concrete example of harm and had noticed the alleged problem only recently. Its evidence of reputational harm was largely theoretical. The injunction was therefore refused.