The High Court confirms that a lack of intention on the part of the defendant in a trade mark infringement and passing-off claim over ices brands is no solid defence. Company directors should also note the verdict on personal liability. Katherine Seymour opens up the ice cream tubs.
Who: Tubzee Limited v Safron Foods Limited and others  EWHC B15 (Ch)
High Court of Justice Chancery Division Intellectual Property
Leeds District Registry
When: November 2007 – October 2008
Law stated as at: 6 October 2008
This was a claim for passing off and trade mark infringement relating to the 'get-up' used by Safron Foods Limited ("Safron") to sell its Kulfi ice cream products. Safron changed its get-up in June 2007. Tubzee Limited ("Tubzee") objected, contending it was confusingly similar to its own branding, and thus Safron has infringed its trade marks and passed off its product as Tubzee's.
The claims for both infringement of Tubzee's registered trade marks and passing off succeeded; the Court found there was a likelihood of confusion between the parties' get-up.
Tubzee and Safron, both based in Halifax, manufacture and sell Kulfi ice cream. Kulfi is a generic term applied to a popular South Asian dessert made with boiled milk.
Tubzee, started in 2000 as a partnership, is a registered proprietor of a UK trade mark in respect of the "K" and a Community trade mark in respect of a device featuring two traditional matka pots with a white liquid pouring from them over a number of ice cubes (the "key features").
It was common ground that before June 2007 Safron's get-up did not include Tubzee's key features. After that date, however, Safron's new get-up was objectionable because:
- The "K" before "ulfi" had a distinctive and eye-catching dropped "tail";
- A device comprising two brown matka pots pouring a white fluid in a vertical stream was sued; and
- A swirl of one or more shades of colour was employed.
It was disputed whether Safron's get-up included a stylised image of 6 to 12 ice cubes similar to Tubzee. Whilst there were differences between Tubzee's get-up and Safron's get-up, such as Safron's designs incorporating the yellow Safron logo, the features of Safron's designs were similar to such a degree that Tubzee was able to demonstrate a likelihood of confusion.
Tubzee also relied on the fact that two of their customers bought Safron Kulfi believing it to be Tubzee Kulfi and witness statements were produced to that effect.
The High Court rejected Safron's claims that it had failed to appreciate the similarities between the respective parties' get up. The Court found that there was a likelihood of confusion between the parties' products pursuant to section 10(2) of the Trade Marks Act 1994 (similarity of mark and/or goods where there exists a likelihood of confusion).
In relation to passing off, the Court held that Tubzee had goodwill in the get-up of its Kulfi ice cream, that Safron's use of the key features in its get-up amounted to a misrepresentation and that Tubzee had suffered some damage as a result of Safron's actions. Despite the earlier resignation of two of Safron's directors, the Court found that they remained "quasi" directors. As a result, they were found to be personally liable for Safron's passing off and trade mark infringement.
Why this matters:
This case serves as a firm reminder to brand owners that they need to take into consideration their fellow competitors' get-up and intellectual property rights when considering changing their own, in order not to inadvertently pass off their competitors' products as their own, or infringe any existing trade marks.
The case also confirms that a lack of intention to knowingly infringe another's trade mark rights or pass off another's products as their own is not a viable defence. Company directors should also heed the personal liability issue that came home to roost here.