Court adopts broad approach to detriment and reputation issues

United Kingdom
In Westwood v Knight ([2011] EWPCC 8, March 22 2011), the first trial to be conducted in the Patents County Court under the new procedural scheme (for further details please see "Patent County Court holds first case management conference"), the court has upheld claims brought by Dame Vivienne Westwood against online retailer Anthony Knight. 

Knight sold his own brand of clothing and accessories on his websites and on eBay, using a number of trademarks and designs that were reminiscent of Westwood's famous fashion line. These included the 'Red Planet Westwood' mark (which combined elements of Westwood's RED LABEL and VIVIENNE WESTWOOD marks), an image of lips, a design entitled 'DESTROY' and a ringed orb and cross device. Westwood brought claims against Knight for trademark infringement, passing off and copyright infringement, and launched invalidity proceedings against Knight's registered trademarks.

While the judgment is comprehensive, several elements are of particular note. For instance, the court acknowledged that Knight's orb device did not contain the same level of detail as Westwood's trademarks. The court nevertheless held that it infringed Westwood's trademarks when used on clothing or accessories due to the close conceptual and visual similarity of the two marks. It noted that the average consumer normally perceives a mark as a whole and does not analyse the details. The court took a similar view of several of Knight's other contested marks, holding that they infringed Westwood's rights.

The court then considered the validity of Knight's trademark registrations. Two of these contained both the orb and either the words 'Red Planet' or 'red planet jeans' which, although not Westwood marks themselves, were said to suggest a connection to Westwood's Red Label brand. It held that, while the orb was a small part of the overall mark visually, it was sufficiently similar to Westwood's marks that the addition of the words alongside the orb would not negate the likelihood of confusion. 

Westwood's DESTROY design was also held to have been infringed. The design was created by Westwood in the 1970s and combines a Nazi swastika, an inverted image of Christ on the cross and HM The Queen's head on a postage stamp. The design was associated with Jonny Rotten of the Sex Pistols, and enhanced Westwood's reputation as an avant garde designer. Knight's sale of T-shirts carrying the image of an inverted Christ on the cross, described on eBay with the words "Saint Artjunkie westwood jesus tee scared saints", was held to constitute passing off. The court pointed out that the public would encounter the T-shirts in the context of the word 'westwood' and thereby associate the products with the Westwood brand. Despite the fact that Westwood's business no longer used the DESTROY design, the court found that a clear reputation remained in the public mind associating this image with Westwood and her business. 

An interesting element of this case was the court's approach to passing off. In relation to several of the images, none of which were registered as trademarks, it held that, while the case for passing off was weaker than others considered in the judgment, the fact that the relevant product appeared alongside Knight's other uses of Westwood marks (including the words 'westwood' and 'vivienne') meant that the test for passing off was satisfied. Knight's use of numerous marks that were identical or similar to Westwood's rights served to reinforce the message that the goods were connected with Westwood. His business as a whole thus amounted to an exercise in passing off his own goods as those of Westwood. 

The court considered Article 5(2) of the First Trademarks Directive (89/104/EEC) (implemented by the Trademarks Act 1994 and codified in the Trademarks Directive (2008/95/EC)), which relates to infringement in cases where a mark has a reputation and its use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark. The court held that Knight's use of Westwood's trademarks took unfair advantage of the distinctive character of Westwood's marks because it misappropriated the goodwill attached to them. Detriment to the distinctive character of the mark could be shown because it was for the trademark owner to decide on the type of channels that are associated with her goods.
 
The court commented on the application of the reputation test in PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH (Case C-301/07), which requires the goods to be "known by a significant part of the public concerned by the products or services covered by the mark". This did not necessarily need to equate to a high level of sales under the mark in question. For instance, the trademark TOO FAST TO LIVE TOO YOUNG TO DIE was the name of Westwood's shop in 1972 and was thus held to have built up a reputation despite the low value of sales under the mark. 

This case shows that courts are willing to examine the wider context when considering claims for passing off and trademark infringement, and will adopt a broad approach to the questions of detriment and reputation under Article 5(2) of the Trademarks Directive. As such, it seems consistent with the prevailing resolve in the European Union following L'Oréal SA v Bellure NV (Case C-487/07) to protect the owners of well-known brands from those who seek to ride on their coat-tails.

Katharine Vass, Ashurst LLP, London

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