JUST EMPLOYMENT Case highlights dangers of weak marks

In Bignell v Just Employment Law Ltd ([2007] EWHC 2203 (Ch), October 2 2007), the Chancery Division of the High Court has dismissed the infringement and passing off claims brought by an employment solicitor based in Guildford and trading under the trademark JUST EMPLOYMENT against a Glasgow company trading under the corporate name 'Just Employment Law'.

Bignell is a solicitor practising under the business name 'Just Employment' and specializes in employment law. Just Employment Law Ltd is a Scottish company incorporated in May 2004 and based in Glasgow. Its business is the provision of legal advice and representation in employment matters.

Bignell's practice and goodwill are based in the English county of Surrey and Guildford in particular. Bignell registered JUST EMPLOYMENT as a trademark for various goods and services, including legal services, legal advice and consultation services in Class 42 of the Nice Classification. That registration was effective from April 21 1999. Bignell also adopted a logo which he used on his letter heading and on advertisements in the Yellow Pages. The logo was not, however, registered as a trademark. Just Employment Law's own logo featured the words 'just employment law'.

The trigger for Bignell's claim was a radio advertising campaign run by Just Employment Law broadcast on Capital Radio - local London station which also covers Surrey. The script of the advertisement plainly referred to Just Employment Law's full name, including the word 'law'. Nonetheless, following the advertising campaign, Bignell's office received a number of enquiries from people who had heard the advertisement. There was also some evidence of other confusion (eg, a marketing company sent an invoice to Bignell's former London office for services it had provided to Just Employment Law).

Attempts at compromise having failed, Bignell issued proceedings for trademark infringement and passing off. Just Employment Law counterclaimed for a declaration of invalidity under Section 47 of the Trademarks Act 1994. Just Employment Law did not dispute that, if JUST EMPLOYMENT were a validly registered trademark, it would inevitably have been infringing that mark under Section 10 of the act. Its case, however, was that the mark was not registrable in the first place under Section 3(1) because it was descriptive. It also argued that the mark had not acquired distinctiveness through use subsequent to registration.

Based on the classic trilogy in Reckitt & Coleman v Borden ([1990] 1 WLR 491), the issues in this case were:

• the extent of Bignell's reputation or goodwill under the mark JUST EMPLOYMENT;
  
  
• whether Just Employment Law's use of its corporate name involved a misrepresentation to clients or potential clients that its services were those of or connected with Bignell; and
  
  
• whether Bignell had suffered or was likely to suffer damage by reason of an erroneous belief that Just Employment Law was him or was connected with him.

On the question of the inherent distinctiveness of Bignell's mark, the court considered the EU jurisprudence on descriptive marks, starting with BABY-DRY (C-383/99 P). In the court's view, in light of other case law the BABY-DRY decision should be viewed in the context of 'fancy words'; even in that context, the recent decision in MacLean-Fogg v Office of Harmonization for the Internal Market (OHIM) suggested a more restrictive approach to the registration of trademarks. As such, the court considered that these cases did not assist Bignell, as his mark consisted of two ordinary words of the English language which in juxtaposition also conveyed a meaning in ordinary language. 'Baby-dry', in contrast, was an invented word.

However, the court considered that the 'modern approach' of the European Court of Justice (ECJ) could be found in the DOUBLEMINT Case (C-191/01 P), in which the ECJ stated that a sign must be refused registration under Article 7(1)(c) of the Community Trademark Regulation (40/94/EC) "if at least one of its possible meanings designates a characteristic of the goods or services concerned". In other words, it does not have to be "exclusively descriptive" of the goods or services or of their characteristics to be refused registration.

On this basis, the court agreed with Just Employment Law that the words 'just employment', tested by reference to the reaction of an ordinary member of the public to the words, were simply descriptive of the nature of the goods or services in question and, as such, not registrable in accordance with Section 3(1) of the act and EU case law. The court considered but rejected Bignell's submission that there were different possible uses and meanings of the words 'just' and 'employment' on the basis that registration is precluded if one of the possible meanings is descriptive of characteristics of the goods or services in question (see Golf USA v OHIM (T-230/05)).

In considering acquired distinctiveness, the court examined whether a significant proportion of the relevant section of the public identified the services in question as originating from a particular undertaking because of the mark (see Golf USA). While the relevant section of the public could refer to the whole of the United Kingdom or only a geographically limited part of the population, the court considered that in this case regard must be had to the whole of the United Kingdom, since a registered trademark confers a monopoly for the whole country. Bignell essentially had a local reputation in and around Guildford, which was insufficient to give rise to acquired distinctiveness for a descriptive mark.

Applying the Windsurfing criteria ([1999] ETMR 585), the court considered that there was no evidence from which it could make a finding as to Bignell's market share, but common sense suggested that it was very small in national terms. There was eight years of use, which the court considered to be comparatively short, and that use had undoubtedly been limited geographically. The amount spent on promotion was modest and there was no independent evidence from third parties on which to base the factual finding of acquired distinctiveness. Moreover, the court noted that while Bignell had built up goodwill under the name 'Just Employment', his practice had no presence and was wholly unknown in most parts of the country.

As to misrepresentation, the court began with the concession that even a descriptive name may be protected by a passing off action. However, the fact that a name is descriptive may make it harder for a trader to establish that the use of that name would be taken as a reference to its business alone. If a trader adopts words in common use as a business name, some confusion may be expected without giving rise to liability for passing off (see Office Cleaning Services v Westminster Window (1946) 63 RPC 39).

The court also rejected Bignell's submission that this was a case of deliberate deception by the copying of his logo. On the evidence, the court found that there was no copying and no intent to deceive. Additionally, while there undoubtedly had been some confusion, the court was not persuaded that the confusion was a consequence of any (implicit) misrepresentation by Just Employment Law.

Nor did the court consider that Bignell had suffered damage. There was no evidence of any diversion of business away from him to Just Employment Law or of any other sort of pecuniary damage. The court also rejected Bignell's submission that the case "was really a quia timet action" in that the association with Just Employment Law could do serious damage to Bignell's reputation because Just Employment Law was conducting its business in ways of which the Scottish Law Society disapproved.

Moreover, Just Employment Law represented no real threat to Bignell. The court accepted Just Employment Law's evidence that the radio campaign would not be repeated and any confusion other than that emanating from the advertisement was insignificant. Moreover, Just Employment Law had done what it reasonably could to comply with the Scottish Law Society's requirements and on the evidence was a well-managed and highly reputable business.

Thus, the passing off claim failed on the evidence as it stood. However, the court stressed that there was nothing in its judgment to suggest that in different factual circumstances such a claim against Just Employment Law could never succeed, for example if Just Employment Law were to open an office and solicit business in or around Guildford or were to run another advertising campaign without sufficiently distinguishing itself from Bignell.

Chris McLeod, Hammonds, London