Section Head UK COURT DIARY
“Fine” Vs “Fine & Country”... continued font, capitalisation and underlining. The additional use of the strapline ensured that Okotoks’ use gave a similar overall impression to that of F&C’s FINE & COUNTRY mark. In relation to trade mark infringement, Okotoks raised a defence under Article 12(b) of the CTM Regulation (the equivalent of Section 11(2)(b) of the UK Trade Marks Act), claiming that F&C was trying to monopolise a descriptive word (‘fine’), and counterclaimed for the invalidity of the registered mark. They considered that the FINE & COUNTRY mark was primarily descriptive of the kind of properties on offer or was laudatory of the quality of those properties, or both. Again, the Court found in favour of F&C and held that the registered mark was distinctive, both inherently and on the basis of acquired distinctiveness. It followed, in the Court’s view, that the mark was “sufficiently distinctive to have warranted and continue to warrant registration”. In addition, the Court held that the registered mark had a “recognised separate existence apart from the descriptive and laudatory nature of the words themselves”. In the end, the Court was not swayed by Okotoks’ arguments and held that their use of the word FINE amounted to passing off and trade mark infringement. Okotoks appealed to the Court of Appeal.
Comment This decision reminds us that a licensor (or even a franchisor) can bring a passing off claim, despite the fact that they are providing related services to those of their licensee (franchisee). Ultimately, if there is damage or potential damage to the image of a brand, it follows that the ability to attract licensing fees will also be damaged. Instead of letting a Court decide, it is clearly far better to state explicitly in a license agreement which entity shall own the goodwill. This point may also be relevant when conducting trade mark availability searches and considering the ongoing validity of the registrations identified. It seems, from this case, that it will not be as easy to discount a licensor’s and/ or franchisor’s rights in a registration and, as such, great care should be taken before giving the “all clear” signal. It is also noteworthy to mention that, although the word “fine” could be seen as descriptive and laudatory, since the FINE & COUNTRY mark had acquired distinctiveness through use, the scope of protection was wider than it would normally be for descriptive terms. The lesson here is not to live dangerously close to a competitor’s brand. Find your own distinctive name and build your own reputation. By doing so, you won’t face the damaging and expensive consequences faced by Okotoks in this case.
After an assessment of whether or not the High Court had erred in interpreting the law, the Court of Appeal dismissed all of Okotoks’ grounds of appeal and upheld the decision that Okotoks’ use of FINE for estate agency services was indeed both passing off and trade mark infringement of Fine & Country’s rights in the FINE & COUNTRY mark. The main issues dealt with in the Court of Appeal’s decision merely served to confirm the judgment of the High Court.
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