Labelling on Tesco’s new “Healthy Living” food range gives “points” per serving. But POINTS is a registered trade mark and its owner, Weight Watchers, wants Tesco to stop.
Who: Weight Watchers (UK) Limited -v- Tesco Stores Limited
When: April 2003
Where: The Chancery Division of the High Court, London
Sweet & Maxwell's "Lawtel" law reporting service reported on Chancery's refusal to grant Weight Watchers ("WW") a temporary injunction against Tesco until trial. This was in an action for trademark infringement and passing off which WW had brought against the retail behemoth.
What caused the problem in the first place was labelling on Tesco's "Healthy Living" range of food products. This contained a box giving the number of points per serving, with the caption "Points calculated using the standard Weight Watchers calculator…this product is not endorsed by Weight Watchers".
WW had been operating a "points" system since 1996 and had registered the word "POINTS" as a community trademark in respect of food, nutrition, consultation and advice. The POINTS mark appeared on WW's own products and it also licensed others to use it in this way.
The Tesco labelling was not licensed by WW and had been on supermarket shelves since early March.
Tesco defended WW's injunction application on the basis that its reference to the "points" system on the labels was purely descriptive and simply informing customers of calorie and fat content in a particular way. They said it was not distinctive of the particular system operated by WW. They also said that even if WW were right, there should be no immediate injunction: the most WW were entitled to was a royalty, which could very easily be computed and paid come the trial, with no irreparable harm being suffered by WW in the meantime.
WW countered with a consumer survey which was intended to constitute proof that the Tesco labelling was likely to deceive individuals that the Tesco products were linked with WW and, as a result, were bound to cause WW damage.
As is often the case with survey evidence in this context, however, the Court found fault with the survey questions, and with the expert evidence which was based on it. Lindsay J also agreed with Tesco that an immediate injunction was not necessary to prevent irreparable losses to WW.
Accordingly an injunction was refused and the matter goes to a full trial, with Tesco able to continue using the labelling in question in the interim.
Why this matters:
Clearly Tesco took extensive legal advice on the position before starting the use of the labelling in dispute here. On the face of it, its use of the word "points" in the context would seem to be a straightforward trademark infringement. However there is a defence available under Section 11 of the Trademarks Act 1994 if the defendant can show that the use was descriptive and in good faith, and not contrary to honest commercial practices. Tesco's disclaimer on the label is clearly included with that in mind, and we can be sure that all UK food retailers will be closely watching the progress of this case to trial.