Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)

Trade mark infringement based on likelihood of confusion requires a global assessment through the eyes of the average consumer. The court must compare the registered mark with the sign as actually used in its commercial context, giving appropriate weight to distinctive and dominant elements.

A geographical-indication defence requires an overall assessment of whether the defendant acted fairly towards the proprietor’s legitimate interests. Confusion is important but not invariably decisive where there is a sufficient reason to tolerate it. Continuing the use after learning of the registered right, the objection and an available alternative may render previously honest use dishonest.

An unjustified threat made to a customer does not entitle a supplier to relief unless the supplier proves a real, rather than fanciful or minimal, adverse effect on its commercial interests.

The claimant brewery owned a registered trade mark comprising a stylised white rose for beer. It alleged trade mark infringement and passing off arising from two beer labels used by the defendant brewery: Yorkshire Bitter, designed for Marks & Spencer, and Yorkshire Warrior, which reproduced the Yorkshire Regiment’s cap badge.

The defendant relied on the geographical-indication defence and counterclaimed in respect of two alleged threats of infringement proceedings communicated to Marks & Spencer. The principal issues were whether either label created a likelihood of confusion, whether any infringing use accorded with honest commercial practices, whether passing off was established, and whether the communications were actionable threats.

1. The claim succeeded in part and the counterclaim was dismissed. Yorkshire Bitter did not infringe the trade mark and did not constitute passing off. Yorkshire Warrior infringed under article 5(1)(b), subject to a defence under article 6(1)(b) only for use up to the end of October 2009. Its use also constituted passing off.

2. The likelihood of confusion had to be assessed globally through the eyes of the average consumer of beer. The goods were identical and the trade mark had acquired reasonably strong distinctive character. The signs had to be considered as actually used and in their surrounding context. The white rose was the dominant element of both signs.

   The differences in the Yorkshire Bitter design, the rest of the composite sign, the identification of Cropton Brewery on the front and the experience of sales without confusion meant that confusion was not proved. The Yorkshire Warrior rose was closer to the trade mark, and the brewer was not readily identified. There was a likelihood that some consumers would believe that the beer was produced by, or connected with, the claimant.

3. Both rose devices indicated that the beers came from, or were associated with, Yorkshire. Honest practices required an overall assessment of all relevant circumstances, focused on whether the defendant acted fairly towards the trade mark proprietor’s legitimate interests. A likelihood of confusion was important but was not invariably disqualifying where there was a sufficient reason for tolerating it.

   The Yorkshire Bitter use was honest because the retailer had designed the label, the defendant reasonably relied on the retailer, there was a genuine geographical justification, no actual confusion was proved and the claimant pursued the complaint hesitantly. Yorkshire Warrior was also honestly used initially because the defendant reasonably relied on the Regiment’s consent and needed time to investigate the complaint.

   That position changed at the end of October 2009. The defendant then knew of the registration, the infringement concern, the withdrawal of consent and the Regiment’s willingness to accept another label. A suitable modified design was available. Continuing the original design thereafter was not fair to the claimant’s legitimate interests.

4. The claimant had substantial goodwill in the rose mark. Yorkshire Warrior made a damaging misrepresentation; Yorkshire Bitter did not.

5. The first letter to Marks & Spencer was an unjustifiable threat, but the defendant was not a person aggrieved because no real adverse effect on its commercial interests was proved. The second letter, read in context, sought settlement of the existing proceedings and was not a threat by the claimant to sue Marks & Spencer. The counterclaim was therefore dismissed.

not stated in the judgment.