Full case report

Wistbray Ltd v Creative Nature Ltd

Reference [2005] EWHC 2072 (Ch)
Court Chancery Division

Judge Blackburne J

Date of Judgment 11 Aug 2005


Summary

Trade marks – Infringement – s.10(2)(b) Trade Marks Act 1994 – Summary judgment – Similarity between word mark and pictorial sign – Likelihood of confusion


Facts

The Claimant was the registered proprietor of a registered trade mark for the word DRAGONFLY and of a Community registered trade mark for the same word combined with a dragonfly logo. It had used these two marks in relation to the sale of teas since about September 2000. The Defendant was in the business of selling ‘super foods’ such as bee pollen, incense, items such as art and crafts and healing teas. It had exposed for sale and sold its teas, along with its other products, under and by reference to a sign comprising a pictorial representation of a dragonfly. In connection with the sale of teas the dragonfly always appeared with the words “Creative Nature”. It had a website, accessed by a domain name, which included the words “Creative Nature” and where the dragonfly sign, along with the words “Creative Nature”, was featured. The Claimant alleged that the defendant’s use of the dragonfly sign was an infringement of its registered marks, and issued an application for summary judgment.


Issue

Whether the Defendant had a real prospect of successfully defending the claim and whether there was any other compelling reason why the claim should be disposed of at trial.


Held

Granting the application for summary judgment, the Defendant had no real prospect of successfully defending the claim and there was no other compelling reason why the claim should be disposed of at trial. The Defendant used its sign in the course of trade, and it was similar to the Claimant’s marks. The fact that the Claimant’s Community registered mark included the word “Dragonfly” and the defendant’s sign appeared with the words “Creative Nature” did not rob the defendant’s sign of similarity. Applying Verreries de l’Étoile (1894) 11 RPC 142, the Defendant’s sign was also similar to the Claimant’s UK registered word mark. The Defendant used its mark on similar goods. Comparing the mark and the sign and disregarding external factors, and given the likelihood that the average consumer will have an imperfect recollection of the mark when looking at the Defendant’s sign, there was at least a likelihood of confusion.


Comment

While the position here was perhaps not such that a likelihood of confusion would have been found if the goods involved were expensive or of particular importance to consumers, the fact that the goods at issue were ultimately humble tea bags weighed against the Defendant, in that it imbued the average consumer with an imperfect recollection of the Claimant’s marks when viewing the Defendant’s sign. This broadening of the boundaries of what will be sufficient to cause confusion means that, in practice, marks for common household goods are better protected than those for expensive items.


Instructing Solicitors

Laytons for the Claimant; the Defendant was represented by an employee.