Use of 'fine' for estate agency services constitutes passing off and trademark infringement

In Fine & Country Limited v Okotoks Limited ([2012] EWHC 2230 (Ch), July 31 2012), the High Court of England and Wales has held that use of the word 'fine' in relation to the provision of estate agency services constituted passing off and infringement of the FINE & COUNTRY trademarks, dismissing Okotoks Limited’s claims for revocation of the marks.

Since 2001 Fine & Country (F&C) has been providing services to estate agents, operating under and licensing to independent local estate agents use of the name Fine and Country. The name is registered as figurative UK and Community trademarks, respectively for “real estate affairs” and “real estate agency services” in Class 36 of the Nice Classification.

Okotoks has operated agencies in the premium property market under the name Fine since 2009, alongside its pre-existing businesses in the downmarket sector under other names. Okotoks used the name Fine in a stylised manner, often accompanied by the strapline “selling fine homes throughout the country”.

F&C alleged that:

• Okotoks was passing off its business as that of (or as connected with) F&C; and
• Okotoks was infringing F&C’s registered trademarks under Articles 9(1)(b) and 9(1)(c) of the Community Trademark Regulation (207/2009) and Sections 10(2) and 10(3) of the Trademarks Act 1994.

F&C contended that there had been substantial confusion amongst members of the public and those involved in the property business, particularly amongst prospective purchasers and sellers of high-end properties. Okotoks contended that the marks were descriptive and non-distinctive, and that F&C was seeking to monopolise a common English word used extensively in the estate agency market. Okotoks also argued that there was no likelihood of confusion or deception; further, it sought revocation of the marks, arguing that they had become deceptive as to their origin as a result of the manner in which F&C’s licensees had used them.

Hildyard J held that F&C had established the triple requirements of a successful claim in passing off: goodwill, deception and damage. The goodwill had in substantial parts been generated by F&C, which had “developed an attractive force which brought custom”, which in turn entitled them to charge substantial licence fees. The evidence was indicative of confusion and deception, even if it was not so deep-rooted that it could not be dispelled or corrected. The similarities between F&C’s marks and the 'Fine' sign, and the very unusual use by Okotoks of the single descriptive word 'Fine' to denote its business, easily called to mind, and could lead to confusion with, the FINE & COUNTRY marks. Consequently, erosion and damage to the businesses of F&C and its licensees was likely.

Having found confusion and deception in relation to the passing off claim, Hildyard J accepted F&C’s general submission that infringement of Article 9(1)(b) of the Community Trademark Regulation and Section 10(2) of the Trademarks Act necessarily followed. Nonetheless, the judge set out a full analysis, concluding that the overall impression given by the marks was similar and therefore confusing. Further, he held that a successful claim under Article 9(1)(c) of the regulation and Section 10(3) of the act was established, finding an unfair advantage insofar as Okotoks had intentionally taken a risk of an association with F&C’s marks that enured to the benefit of Okotoks. He also held that dilution was likely in light of his finding of the existence of a likelihood of confusion.

In respect of Okotoks’ counterclaims, Hildyard J concluded that the marks were on registration and remained sufficiently distinctive to have warranted and continue to warrant registration. In the manner and the context in which they appeared, they served to identify the business and did not call to mind their semantic meaning.

Hildyard J held that Okotoks had not established that use of F&C’s marks had rendered them deceptive as to trade origin, finding that F&C exercised a considerable degree of control over its licensees. Noting that Okotoks’ arguments as to misleading origin would apply to many licensee or franchise operations, and that there could be difficult questions concerning the ownership of goodwill in such situations, Hildyard J held that these did not arise here since all goodwill was generated directly by F&C or held on trust for them under contractual terms.

Désirée Fields, McDermott Will & Emery UK LLP, London