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Tuesday, 27 March 2012

Love Bites fade away, sandwiches get eaten -- but trade marks go on forever

It is well known that some judicial decisions are more binding than others. Thus for example, taking a British perspective, we see that the rulings of the Court of Justice of the European Union are binding on all national courts, including the Supreme Court; the Supreme Court's decisions bind the High Court; those of the High Court bind the Patents County Court. Can there then be anything less binding than a Patents County Court ruling? Connoisseurs of dispute resolution will instantly know that rulings from the Intellectual Property Office's hearing officers aren't binding on anyone except the parties to them -- but there's a new judicial possibility that is even less binding than that: a preliminary opinion from the Patents County Court that isn't even binding on the parties who have been arguing their case before it.

An example of this device can be found in Weight Watchers (UK) Ltd and others v Love Bites Ltd and others [2012] EWPCC 11, which came before Judge Colin Birss QC on 21 February 2012 and which, despite its non-precedental, non-binding nature has wisely been posted on the BAILII website here for all to contemplate.

Feeling a little queasy, Herbert now realised
that there were better ways to dispose of unwanted
sandwiches than to eat them all himself ....
What gave rise to this little curio? To start at the beginning, Weight Watchers owned the well-known WEIGHT WATCHERS trade mark for weight reduction services and various food products which it either made and sold itself or licensed others to do so.  Love Bites sold WAIST WATCHERS sandwiches from 2006 or thereabouts. It wasn't long before Weight Watchers wrote to Love Bites, expressing their displeasure, but at that time the issue remained unresolved and Love Bites just carried on doing what they were doing. Initially Weight Watchers took no further action, regarding Love Bites as too trivial to worry about. They changed their mind, though, after Love Bites applied for and then obtained their own registered trade mark for WAIST WATCHERS. Then, in August 2010, Love Bites wrote to Weight Watchers, reminding them that they'd been trading under their name for around three years and offering to sell them brand; if Weight Watchers didn't buy it, Love Bites said that they'd expand their use of it since it had been so successful and that they were contemplating their own licensing programme.

On this basis, and armed with some survey evidence, Weight Watchers commenced proceedings before the Patents County Court.  They said Love Bites was infringing their trade mark under the Trade Marks Act 1994 section 10(2) by causing a likelihood of confusion on account of the similarity of marks and products, as well as under section 10(3), by taking unfair advantage of the repute of their mark or by tarnishing it without due cause.

In the course of the case management conference, the judge asked the parties if they'd like him to give them a preliminary and non-binding opinion as to the merits of the case. Both sides said that they were willing and indeed wished to embark on that course.

Having heard arguments on both sides, Judge Birss QC gave his non-binding opinion that there was a strong case that the use of the WAIST WATCHERS trade mark infringed the earlier WEIGHT WATCHERS mark and that their registration of the WAIST WATCHERS trade mark was invalid.

The IPKat was most impressed with the manner in which the judge handled the whole matter. By giving Love Bites the chance to put its case he was able to satisfy it that was being treated seriously and respectfully by the judicial system; by giving a non-binding opinion he was able to tell Love Bites what 99% of this weblog's readers would probably have told them anyway, that they were on a one-way ticket to defeat. With luck, this should finish the matter off more speedily and cheaply than if the full machinery of even the relatively economical Patents County Court had been engaged.

Merpel is mystified that, having identified Love Bites as an over-similar entity in the first place, Weight Watchers let it carry on to the point that it applied for and got a highly similar trade mark without letting out so much as a squeak.  Had the international company been slimming down its trade mark watch operations, or what?

How to make a perfect sandwich here and here
How to hide a love bite here

4 comments:

Anonymous said...

I wonder if the PCC expressing a view that non-binding opinions are a good thing might encourage the UKIPO to start offering preliminary indications in opposition proceedings again?

As far as I can tell, while these are still available, the Registrar now never deems it appropriate in "this particular case".

Anonymous said...

Interesting that Judge Birss says "it was no part of the Registry's function to consider whether WAIST WATCHERS was too close to WEIGHT WATCHERS". Trade mark no 2389227 WAIST WATCHERS in class 30 for "sandwiches" was applied for and registered in 2005, when the Registry still conducted relative rights examination. From the speed at which the mark progressed, it doesn't look as though there were any citations.

David said...

does anyone know if these 'non-binding opinions' are specific to the PCC, or could one find a judge in the High Court giving one?

Anonymous said...

I wonder why s. 11(1) of the Trade Marks Act wasn't even mentioned...

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