Distributor painted into corner following use of AUTOPAINT mark

In Fearns v Anglo-Dutch Paint and Chemical Co Ltd ([2007] EWHC 955 (Ch), May 2 2007), the High Court of England and Wales has handed down a decision concerning the issue of consent in trademark infringement and passing off claims.

The claimant, Gary Fearns (trading as Autopaint International), was the proprietor of UK trademark registrations for AUTOPAINT INTERNATIONAL and a device mark which included those words. He operated an unincorporated business under that name, selling paint and associated products for use on cars. Fearns had his own paint shops and franchisees, and for this purpose he bought paint from various companies, for which Anglo-Dutch Paint and Chemical Co Ltd was the distributor in the United Kingdom.

The complaint arose when, in 2004, Anglo-Dutch began selling paint directly to Fearns's franchisees under the AUTOPAINT mark. Fearns commenced proceedings alleging trademark infringement, passing off, copyright infringement, breach of contract and malicious falsehood. He also claimed that Anglo-Dutch had acted intentionally to inflict economic harm on him by unlawful means.

Anglo-Dutch, on the other hand, contended that it was acting at all times with Fearns's consent. On the evidence, the High Court found that the parties had indeed agreed that Anglo-Dutch could sell directly to franchisees where Fearns was unable to supply them.

However, by extending the sales to any product which the franchisees were able to obtain from Autopaint, Anglo-Dutch had gone further than the agreement permitted it to do, and it had committed trademark infringement and passing off.

On the other hand, copyright infringement in respect of the design and logo appearing on the Autopaint tins was not established. By virtue of Section 52 of the Copyright, Designs and Patents Act 1988, there was only limited copyright protection (25 years). The court concluded that the paint tins could not be regarded as "printed matter primarily of a literary or artistic character" and could not therefore benefit from the exception to the rule.

With regard to the alleged intention to harm by offering the entire range of products, the court held that since the franchisees had a choice as to whether to proceed with Autopaint or Anglo-Dutch, Anglo-Dutch had not caused the loss complained of. The malicious falsehood claim also failed as it was not based on satisfactory evidence.

Vlotina Liakatou, Queen Mary Intellectual Property Research Institute, London, on behalf of McDermott Will & Emery UK LLP