Fine & Country Ltd & Ors v Okotoks Ltd & Anor

A passing-off claimant must establish goodwill, a defendant’s misrepresentation likely to deceive, and damage or a real likelihood of damage. Mere confusion is insufficient, but deception may exist where consumers assume a connection, including where an initial mistake is later corrected. The court assesses the overall impression made by competing signs, taking consumers as they are found.

For trade mark infringement, the overall impression of the mark and sign is material. A defendant’s conscious decision to accept a recognised risk of confusion may support the court’s assessment, although it does not itself prove an intention to deceive. A mark composed of descriptive words may nevertheless acquire distinctive character through its use and context.

The claimants operated the Fine & Country estate agency brand through licensed independent agencies. The defendants operated estate agency businesses and launched a separate premium-property brand called “Fine”, using a sign with similar typography, capitalisation, underlining and colouring.

The claimants alleged passing off, infringement of United Kingdom and Community trade marks, and accessory liability against the defendant group company. The defendants denied confusion and challenged the validity, distinctiveness, use and control of the marks. The central issues were whether the signs caused actionable deception and damage, whether the marks were valid and enforceable, and whether both defendants were jointly liable.

1. Passing off. The claimants established goodwill in the business and brand services supplied to licensees. Goodwill was generated substantially by the claimants’ licensing, advertising, London office, marketing facilities and brand, and was not confined to the individual licensees’ estate agency businesses.
2. The court distinguished mere confusion from actionable deception. The relevant question was whether a substantial number of actual or prospective customers would assume a connection between the businesses. The court assessed the signs by their overall impression and by the imperfect recollection of consumers. Evidence of actual confusion supported, but was not essential to, the finding.
3. The similarity between the signs, including the font, capitalisation, gold underlining and the use of “country” in the strapline, created a real risk of customers believing that “Fine” was connected with, or a rebranding of, Fine & Country. The defendants’ conscious decision to accept that risk supported the court’s conclusion, without amounting to proof of intentional deception.
4. There was a realistic risk of damage to the claimants’ goodwill through diversion, erosion of distinctive character and loss of control over reputation. The passing-off claim against the first defendant therefore succeeded.
5. Validity and revocation. The marks were sufficiently distinctive in the context in which they were used, despite the descriptive or laudatory meanings of the component words. The defendants failed to establish that use by licensees was liable to mislead the public as to origin or quality. They also failed to establish absence of genuine use or absence of the proprietor’s consent. The Part 20 claims were dismissed.
6. Trade mark infringement. The signs were sufficiently similar to create a likelihood of confusion under section 10(2) of the Trade Marks Act 1994 and article 9(1)(b) of the Community trade mark regime. The use also created the necessary link and unfair advantage or detriment for the purposes of section 10(3) and article 9(1)(c). The intentional adoption of a sign known to be similar was unfair in the circumstances.
7. Joint liability. The parent company was jointly liable. The strategic rebranding and final design decisions were made at parent-company level, showing a combination to secure acts which proved to be infringements.
8. The claimants were entitled, subject to further submissions on form, to injunctive relief, delivery up or destruction of offending material, and an inquiry into damages or an account of profits.