Judge stops escalation of ALM race
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In Alm Manufacturing v ALM Imp Exp Ltd (June 9 2008), the Chancery Division of the High Court of England and Wales has put an end to a dispute over the use of the name ALM.
This was an application for summary judgment against ALM Imp Exp Ltd (AIE) and its director in a claim for trademark infringement and passing off. Alm Manufacturing was the proprietor of the trademark ALM for various household products which it made, sold and marketed. Having traded under this mark for several years, Alm discovered that AIE had placed an advertisement in a trade magazine for "ALM imports and exports limited", which offered various household and garden products. Alm made enquiries of AIE and found that although none of the goods were sold under the mark ALM, AIE’s letterheads and its director's business cards were explicitly and prominently marked with the name ALM in one form or another.
Alm sought summary judgment. AIE's director resisted, maintaining that:
- None of the goods sold by AIE were marked with the brand name ALM. Therefore, there was no infringement of the mark ALM.
- AIE never used the name ALM alone, but only with the terms ‘imports’ and ‘exports’.
- Neither defendant knew of the existence of Alm before they produced their advertisement. Therefore, if there was any infringement, it was entirely innocent.
- The range of products sold by each side was different and did not justify an action for trademark infringement.
Sir Donald Rattee of the Chancery Court granted summary judgment to Alm. In his view, the key question was not whether the defendants intended to infringe or pass off their goods as those of Alm, but whether, inadvertently or otherwise, they had actually done so. On the evidence, neither defendant had a realistic prospect of defending the claim. The so-called defences were not so much defences in law as attempts to excuse or justify infringement or passing off.
Arguably, this is yet another case that should never have got to court. The defendant director acted for himself, motivated presumably by his belief that he had done nothing wrong and by a degree of wilful blindness as to the outcome of his actions.
Jeremy Phillips, IP consultant to Olswang, London
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