Russel Rabbit Fails to Reign Supreme

As well as featuring some amusing fictional animals, the recent trade mark case of Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch) includes some useful lessons for brand owners about the scope of trade mark protection (or lack thereof).

Supreme Petfoods produced a muesli rabbit food under the name "Russel Rabbit" together with a range of species-specific muesli petfoods under the names "Gerty Guinea Pig", "Harry Hamster", "Charlie Chincilla", "Reggie Rat", "Frankie Ferret" and "Gerri Gerbil".  These are all distinctive brands, which the evidence showed had a degree of customer recognition - at least for their "Russel Rabbit" flagship product.  However the UK and European Community registered trade marks which they were seeking to enforce were for the word "SUPREME" and logos consisting of a stylised word "Supreme" and a ribbon device featuring the stylised word (which can just be seen at the top left of the packaging below, beneath the cartoon Russel Rabbit).

Henry Bell also produced a range of small animal feeds, including "Mr Johnson's Supreme Rabbit Mix", the latest packaging for which was like this:

Supreme Petfoods objected to Henry Bell's use of the word "Supreme" on this packaging and on their revamped "Supreme" range of feeds.

The original Mr Johnson's range, which had been acquired by Henry Bell, included such products as "Amos Hamster Mix", "Gloria Guinea Pig Mix" and "Rupert Rat Mixture", but sadly these plucky animals played no further part in the proceedings, and did not go into battle against Harry Hamster, Gerty Guinea Pig and the others.

The first lesson from this case is that descriptive trade marks are not a good idea.  You are not supposed to be able to register trade marks that are descriptive of the goods and services on which they are to be used, as this would give you an unfair monopoly of such terms.  Supreme Petfoods had somehow managed to get away with registering the word "Supreme" as a trade mark despite its being descriptive or laudatory (as Mr Justice Arnold put it) of the goods.  But there was considerable evidence of the word being widely used in a descriptive fashion in the petfood sector (35 examples are listed in the judgment) and Arnold J. therefore declared the word and stylised word marks invalid for lack of distinctiveness, except in respect of small animal feeds - for which he found they had "acquired a slender degree of distinctive character" through use.  A trade mark can still be declared invalid after it has been registered, and it's a valid tactic for an alleged infringer to counterattack by counterclaiming for invalidity.

The second lesson is that even if you can register your descriptive trade mark in the form of a fancy logo, it still won't do you much good.  The ribbon marks were declared valid, but Supreme still had to establish infringement, and Henry Bell weren't using the word "Supreme" on a ribbon.

The third lesson is that infringement is not as straightforward an issue as clients often seem to think.  Supreme had survived the invalidity challenge to their word and stylised word marks in respect of small animal feeds, which was what Henry Bell were using the word "Supreme" to describe.  But the law on infringement is not straightforward (as Arnold J's detailed analysis of the case law of the Court of Justice of the European Union demonstrates).  The main reason Henry Bell were held not to be infringing in this case was that their use of the word "Supreme" was not as a trade mark (i.e. for the purpose of distinguishing its goods), but was purely descriptive.  This demonstrates another problem with descriptive marks.  Even if you can manage to register them, and survive an invalidity challenge, you may still not be able to stop a competitor using them if they do so descriptively.

The final lesson is that trade mark disputes can be complex and therefore costly.  You therefore do not want to get into a serious dispute that will go to Court unless you really need to do so to protect your brand and are sure of your ground.  To conclude with Arnold J.'s opening remarks: “It ought to be possible for such a dispute to be resolved without great legal difficulty or expense. Such is the current state of European trade mark law, however, that instead it has thrown up a considerable number of legal and factual issues […]. As a result, I fear that the costs will have been out of all proportion to what is at stake.”