Defendant held to use mark as badge of origin, not as description of goods

United Kingdom
There are two views which one can take with regard to a litigant who represents himself in IP proceedings. One might view him as a plucky individual with the guts and initiative to dispense with unnecessary expenses and get the job done in a direct fashion. Alternatively, he might be seen as a foolhardy, ill-advised soul who runs the risk of making his efforts both unrewarding and more expensive for all concerned. There is no doubt as to which of the two categories the defendant belonged in Fox International Group Ltd v Folly ([2010] EWPCC 30, November 1 2011), a decision from the Patents County Court of England and Wales.
 
Fox International Group Ltd made and supplied angling equipment in connection with which it had used the word STALKER - which it had registered as a Community trademark - since 2001. From December 2009 Jay Folly sold fishing equipment on the internet under a device mark which represented the word ‘Stalker’, replacing the ‘T’ with a picture of an angler holding a fishing rod, and in which the word 'tackle' was also portrayed:
 
Fox sued Folly for trademark infringement, alleging both ‘double identity’ infringement (same marks, same goods) under Article 9(1)(a) of the Community Trademark Regulation (207/2009) and ‘likelihood of confusion’ infringement (same and/or similar marks and goods plus likelihood of confusion) under Article 9(1)(b). Passing off was also alleged, but that claim did not need to be heard.
 
Folly argued that there was no ‘double identity’ infringement, since the respective marks were not identical: his consisted of the words ‘Stalker Tackle’ plus the T-shaped angler, while Fox's trademark was FOX STALKER, because it used the STALKER mark together with the prefix ‘Fox’. In any event, Folly alleged that ‘Stalker’ was a generic term, so that Fox's mark was invalid in the first place. Finally, if all else failed, Folly claimed that there was no infringement since his use of the word ‘Stalker’ was not an indication of origin, as it was purely descriptive ("stalking being an angling term for ‘mobile fishing’").
 
This weak array of arguments might lead the reader to suspect that Folly was well named, unless he had solid evidence on which to support his contentions (which he did not). The extent of his folly can be further gauged from the fact that he represented himself - even though the judge encouraged him at the case management conference to get some legal representation.
 
Unsurprisingly, the court gave judgment for Fox:
  • Fox did not use the word ‘Stalker’ only in tandem with the word ‘Fox’. However, it was irrelevant whether the company did or not, since ‘double identity’ infringement under Article 9(1)(a) is measured with regard to the mark which is registered - and that was the word ‘Stalker’ alone.
  • Folly used the word ‘Stalker’ alone, and that word was identical to Fox's trademark. However, Folly's device was not just the word ‘stalker’ - it included a striking image of an angler with a rod, which was not identical to Fox's STALKER word mark. This did not help Folly, however, since he used the word ‘Stalker’ as a badge of origin for products which he was not just describing, but also selling. For example, his website stated "Welcome to the Stalker website" and "We will be adding to our range..." - ‘we’ clearly referred back to ‘Stalker’ and showed that, to someone viewing the site, ‘Stalker’ referred to the entity from which the goods originated. No one looking at Folly's website or eBay pages would think that he was using the word in a descriptive sense. There was thus infringement under Article 9(1)(a) and there was no defence of honest descriptive use.
  • As for the 'likelihood of confusion' infringement, it had to be asked whether Folly's use of his mark without the word 'Tackle' (the usual way he used it) gave rise to a likelihood of confusion. The average purchaser of fishing goods who was familiar with Fox's products would generally associate them with its FOX mark, but would also be aware that Fox's goods were often just marked STALKER. It is actually more difficult to spot a sign that is missing than spotting the presence of one that is there. Even if a purchaser spotted the absence of the word ‘Fox’ on Folly's goods, the impact of that revelation would not be sufficient to negate the natural assumption that Folly's goods came from the same source as the STALKER-branded goods which he already knew about. Folly's device thus created a likelihood of confusion.
  • There was no evidence that Fox's STALKER mark was or had become a common name in the trade for angling kit as a result of either Fox's acts or omissions, which would have given Folly an escape route under Article 51 of the regulation. Nor could it be argued that STALKER was not inherently distinctive and thus vulnerable to an invalidity attack under Article 52.  
Jeremy Phillips, IP consultant to Olswang LLP, London

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