Johnson & Johnson sued L’Oreal in Ireland for infringement of their Irish registered trade marks “No more tears” in respect of baby shampoos.
Who: L'Oreal and Johnson & Johnson
When: March 2000
Where: Chancery Division of London's High Court
Johnson & Johnson ("J&J") sued L’Oreal in Ireland for infringement of their Irish registered trade marks "No more tears" in respect of baby shampoos. L’Oreal had just launched "No Tears" children’s hair products in Ireland and the UK. J&J had also registered their marks in the UK and L’Oreal wrote to J&J asking them to confirm that no separate infringement proceedings would be brought in the UK. J&J’s solicitors replied saying that they reserved their client’s rights. L’Oreal responded with UK proceedings seeking relief for groundless threats of trade mark infringement proceedings and other relief including revocation of the J&J marks. At first instance the Court struck out J&J’s claims but the appeal judge described the J&J letter as "the work of a master of delphic utterances" which said everything and nothing and although in veiled or muffled form, conveyed a message which had the same effect on the reader as a threat of proceedings. Accordingly the "groundless threats" action was not struck out by Lightman J.
Why this matters:
The "groundless threats" claim can be an excellent tactical weapon by which a party knocked back by trade mark infringement claims can gain the initiative and wrongfoot the claimant. The L’Oreal letter seeking confirmation that no UK trade mark proceedings would be brought was perhaps sent with exactly that in mind, and if so, the tactic succeeded. Those wishing to make trade mark infringement complaints may derive great pleasure from "putting the frighteners" on a defendant with a withering letter making numerous claims and threats. If registered trade marks in respect of goods are involved, this case underlines the need for extreme care in drafting such letters. If the relevant trade marks are in respect of services, however, there is not so much need for extreme caution as the "groundless threats" action only arises where the threats are in respect of trademarks registered for goods.