Premier Coup

A recent case before the English Court of Appeal (Premier Luggage and Bags v. The Premier Company (UK)) has shown the limits that can be placed on the owners of UK trade mark registrations in the interests of competition.

The claimant, Premier Luggage, had sold Premier branded luggage in the UK from 1985 onwards. In 1997 they obtained a UK trade mark registration for Premier in respect of a wide variety of goods in Class 18. The application was accepted on the basis of evidence of acquired distinctiveness.

The defendant, The Premier Company (UK) (Premier UK), was an off-shoot of a UK company, Premier Decorations that had established a reputation amongst major UK retailers for the supply of Christmas decorations and the like. The controlling interests in Premier Decorations decided to expand into the UK luggage and travel goods market and to use The Premier Company (UK) for this purpose. They therefore began selling luggage in the UK at the end of 1996 under the PCL brand. The swing tags, brochures, etc. for these products bore the mark PCL as well as the full company name of the supplier, The Premier Company (UK) Limited. Salesmen for the PCL products approached the existing retail contacts of Premier Decorations in order to introduce their new luggage business. In doing so, they referred to themselves as from Premier, Premier Luggage or Premier Luggage Company.

Premier Luggage sued Premier UK for trade mark infringement and passing off. In response Premier UK applied to cancel the claimant’s UK trade mark registration for Premier. The Judge (Mr Etherton QC) ruled as follows:

• On the evidence, the trade mark registration for Premier was valid and enforceable.
• The claimant had established the classic trinity of reputation (or goodwill) in the trade mark Premier, misrepresentation by the defendant leading to confusion (or deception) and resulting damage. The passing off claim therefore succeeded.
• The oral use of Premier by the defendant was trade mark infringement under Section 10(1) of the 1994 Act (identical mark/identical goods).
• The oral use of Premier Luggage and Premier Luggage Company by the defendant was trade mark infringement under Section 10(2)(b) of the Act (similar mark/identical goods).
• Since the use of Premier by the defendant amounted to passing off, it would not be in accordance with honest practices and therefore they could not rely on the own name defence under Section 11(2)(a) of the 1994 Act. Further, there was considerable evidence of confusion caused by the use of the defendant’s name on the PCL swing tag. It followed that this use of The Premier Company (UK) Limited also amounted to trade mark infringement under Section 10(2)(b).

The defendant appealed. The Court of Appeal allowed the appeal in relation to passing off and trade mark infringement under Section 10(2)(b) but dismissed the remainder of the appeal. In the Court of Appeal’s view:

• The relevant question, in the context of a passing off action, is not whether there is a risk of confusion because the defendant’s name is similar to the claimant’s, but whether the defendant’s use of his name or connection with his goods or his business will be taken as a representation that his goods are, or have some connection with, the goods or business of the claimant. A risk of confusion is not enough.
• Even actual confusion does not show that there has been a misrepresentation by anyone.
• There was no evidence that anyone to whom Premier UK sales staff had introduced themselves as from Premier (or from Premier Luggage or Premier Luggage Company) had been misled into doing business with Premier UK in the belief that Premier UK was Premier Luggage… The evidence was that their sales effort was directed at national retailers who were existing customers of Premier Decorations.
• It was unlikely that a purchaser of a PCL product, who also had a knowledge of Premier branded products, would be led to think that the PCL product, bearing Premier UK’s company name on the swing tag, was associated with Premier Luggage.
• There was therefore no convincing evidence of actual deception and the passing off claim failed.
• If the use by Premier UK of its company name on PCL swing tags did not amount to passing off, then the claim to trade mark infringement based on that use also failed. This was because the swing tags were used for a legitimate commercial purpose, namely to identify the trade origin of Premier UK’s product and to take advantage of the existing goodwill and trade connections of Premier Decorations. The use of the name The Premier Company (UK) Limited on the swing tags was therefore within the Section 11(2)(a) own name defence.
• The oral use of Premier by the defendant’s sales staff amounted to trade mark infringement under Section 10(1). Under that Section, a likelihood of confusion was not necessary to succeed. Further, since the name used was not the full company name it could not be saved by the own name defence.
• The evidence was not sufficient to establish that there was a likelihood that those who were called by sales staff acting for Premier UK would make a connection with the mark Premier. It followed that no likelihood of confusion on the part of the public existed and that the action brought under Section 10(2)(b) failed.

A number of aspects of this case are not understood. First, how can the oral use of the sign Premier Luggage for luggage not amount to infringement of a trade mark registration for Premier under Section 10(1) of the 1994 Act (identical mark/identical goods), when, for example, the earlier sign Decon-Ahol has been said to be identical with the registered mark Decon (Decon Laboratoires v Baker Scientific), William R. Asprey, Esq has been viewed as identical with Asprey (Asprey & Gerrard v WRA (Guns)) and Vantage Records Points has been found to be identical with the registered mark Vantage (AAH Pharmaceuticals v Vantagemax)? Even under the test put forward by the Advocate General in the Arthur et Felice case, one would believe that Premier Luggage was identical with Premier registered for luggage. Second, why should restricting the use of a sign (Premier Luggage) in respect of the registered goods (luggage of various types) to existing customers of the defendant company avoid a finding of a likelihood of confusion and therefore trade mark infringement? Shouldn’t the court also consider the likely future use of Premier Luggage by the defendant as they expand into wider commercial areas, including perhaps the existing customers of the claimant company, and on that basis prevent all use of Premier Luggage (and Premier Luggage Company)? Third, it is surely incorrect under UK trade mark law to find that the own name defence is limited to the use of the full company name including the word Limited? Under existing UK case law, the defence should extend to at least The Premier Company (UK) and probably also The Premier Company. No comment is made on the nature of this practice, it is simply submitted that the Court of Appeal’s view was too narrow bearing in mind present UK practice.

Finally, what is the point of owning trade mark rights if they cannot be used to prevent confusion caused or likely to be caused by a later entrant to the same commercial area, even if that confusion is caused inadvertently? If UK trade mark law is interpreted in such a way that a company called Premier Luggage and Bags Limited who own registered and unregistered trade mark rights for Premier in respect of luggage cannot prevent an unconnected luggage distributor from referring to themselves as Premier Luggage or Premier Luggage Company or prevent the use of Premier as part of a company name used on luggage, then the interpretation of the law needs to be reviewed fundamentally and as a matter of urgency.