Natural Instinct Ltd v Natures Menu Ltd

For trade mark infringement, similarity and likelihood of confusion must be assessed globally, through the eyes of the average consumer and in the context of the actual use of the sign. A distinctive house mark does not prevent infringement where the earlier mark retains an independent distinctive character. Actual confusion is not essential, but reliable evidence of confusion may confirm the assessment. For infringement under section 10(3) of the Trade Marks Act 1994, the proprietor must establish reputation, a link and injury; the burden then shifts to the defendant to establish due cause. Passing off requires goodwill, misrepresentation and damage. Descriptive terms cannot ordinarily be monopolised.

Natural Instinct Limited, proprietor of a United Kingdom trade mark incorporating NATURAL INSTINCT for dog and cat food, sued Natures Menu Limited for infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994 and for passing off.

The defendant used TRUE INSTINCT and NATURES MENU TRUE INSTINCT for pet food. The central issues were the distinctiveness and reputation of the claimant’s mark, similarity, likelihood of confusion, injury to reputation, due cause and misrepresentation.

1. Disclosure. The disclosure order required documents to be both within the defendant’s control and documents on which it wished to rely. It did not require a search for documents the defendant wished to withhold. Separately, the parties were obliged to disclose known adverse documents. That obligation did not itself require a search, but documents found by a search or otherwise coming to the party’s attention had to be disclosed. Documents evidencing consumer confusion were relevant adverse documents and should have been disclosed. The defendant’s correspondence about disclosure was misleading.
2. Section 10(2). The claimant’s mark had acquired a high degree of distinctiveness. The dominant element was NATURAL INSTINCT, while TRUE INSTINCT was the dominant element of the defendant’s signs. The signs were visually similar to a low degree, aurally similar to a medium degree and conceptually similar to a high degree, producing medium overall similarity. The goods were identical. Applying the global assessment to the actual context of use, there was a likelihood of confusion. Adding the distinctive house mark NATURES MENU did not avoid infringement.
3. Section 10(3). The claimant had a reputation. The similarity and evidence of actual confusion established a link. The evidence supported detriment to distinctive character and repute, and the defendant’s use gave it an unfair advantage. Once infringement was established, the burden shifted to the defendant to show due cause. A licence for TRUE INSTINCT did not establish due cause.
4. Passing off. The claimant had goodwill in NATURAL INSTINCT and the registered mark. The findings on likelihood of confusion supported a finding of misrepresentation, and damage followed. The terms raw and the packaging colourways did not independently support passing off because raw was descriptive and the packaging was insufficiently similar.
5. The claims for infringement under sections 10(2) and 10(3), and the passing-off claim, succeeded.