Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd

A word which is descriptive or laudatory of animal food lacks inherent distinctive character. It may nevertheless acquire a slender distinctive character through use, but the assessment is specific to the goods and relevant public.

In a double-identity infringement claim, the proprietor must establish use in relation to identical goods. Where that use is purely descriptive, the claim fails. If the use is at least partly distinctive, a likelihood of confusion is presumed, subject to rebuttal by the defendant. Long, honest coexistence without confusion may rebut that presumption.

Trade mark infringement must be assessed in the precise context of use. A descriptive use of a common quality term may also be protected by the honest-practices defence.

Supreme Petfoods Ltd owned UK and Community trade marks comprising the word SUPREME, stylised word marks and ribbon device marks for animal food and related goods. It claimed that Henry Bell & Co (Grantham) Ltd infringed those marks and committed passing off by using SUPREME for the defendant’s small-animal food range.

The court determined the validity of the marks, the relevant average consumer and assessment date, infringement under Articles 5(1)(a), 5(1)(b) and 5(2) of the Directive and corresponding Regulation provisions, and the Article 6(1)(b) defence.

1. Validity. The UK Word Mark was descriptive, or alternatively laudatory, for animal food and therefore lacked inherent distinctive character. The stylised word marks stood or fell with it. The ribbon marks possessed some distinctive character. The UK Word Mark and stylised word marks had acquired only a slender distinctive character in relation to small-animal food by July 2013, and were invalid beyond that category.
2. Assessment of infringement. The relevant date was March 2012, when the defendant relaunched its expanded SUPREME range in redesigned packaging. The use had to be assessed in its precise context and from the perspective of the average pet owner, who would exercise moderate attention when buying everyday pet food.
3. For Article 5(1)(a), the six conditions identified in the CJEU case law applied. The defendant’s use was purely descriptive and was not use for the purpose of distinguishing its goods. Condition (v) therefore failed. Alternatively, if the use was at least partly distinctive, a likelihood of confusion was presumed, but the defendant rebutted that presumption through more than 20 years’ coexistence without established confusion.
4. There was no likelihood of confusion under Article 5(1)(b). The common word SUPREME was non-distinctive in the relevant context, there was no distinctive resemblance to the graphical elements of the stylised and ribbon marks, and the prominent Mr Johnson’s branding further negated confusion.
5. The Article 5(2) claim failed because the ribbon marks lacked the necessary reputation. In any event, there was no link or detriment, and the defendant had due cause based on longstanding descriptive use of a common laudatory term.
6. Even assuming infringement, the defendant established the Article 6(1)(b) defence. Its use concerned the quality of the goods and was in accordance with honest practices. The use was descriptive or laudatory, there was no proven likelihood of confusion or interference with exploitation of the mark, and the correspondence had conveyed that objection was directed to particular presentations rather than SUPREME per se.
7. The infringement and passing-off claims failed. The ribbon marks remained valid; the word and stylised word marks were valid only for small-animal food.