The High Court has granted summary judgment to ALM Manufacturing, a garden tools manufacturer, dismissing a defence of “innocent” infringement. Katherine Seymour reports the judgment and considers the implications for those using another’s trade mark.
Topic: Brands
Who: ALM Manufacturing Limited and others v ALM Imp Exp Limited and another
When: February – June 2008
Where: UK – High Court – Chancery Division
Law stated as at: 9 June 2008
What happened:
The High Court has granted summary judgment in respect of ALM Manufacturing's claims for trade mark infringement and passing off against ALM Imp Exp. ALM Manufacturing relied on its registered trade mark for "ALM", registered for various classes of goods, including gardening and household goods.
ALM Imp Exp Limited placed an advertisement in a well-known trade journal in February 2008. The advertisement was headed with, amongst other things, the letters "ALM" and indicated that the advertiser distributed gardening tools and household goods.
Although the letters "ALM" were used prominently throughout the defendant company's stationery, forming part of the defendant company's name or as ALM International Trading, the letters were not actually applied to the goods in question.
ALM Manufacturing charged ALM Imp Exp with trade mark infringement and to the High Court for summary judgment for an injunction to restrain the defendants from using the trade mark "ALM".
The defendants contended that they never used "ALM" alone, but always followed by the wording, "Imp Exp" or "International Trading. The defendants also argued that they were unaware of the claimant's existence prior to placing the advert in the trade journal and, as a result, any trade mark infringement was entirely innocent.
The High Court held that the defendants had no realistic prospect of defending the claim, as use of "ALM" in the course of promoting sales of goods in the classes covered by the ALM Manufacturing's trade mark registrations constituted infringement within section 10 of the Trade Marks Act 1994.
Furthermore, the High Court determined that the absence of intention on the defendants' part was irrelevant to the issue of infringement.
Why this matters:
In this case, the Court was asked to accept the rather novel defence that the defendants were not aware of and had not intended to infringe the claimant's trade mark – a consideration which is, of course, irrelevant in infringement cases. The defendant had, after all, used the "ALM" mark prominently on its company literature promoting goods that were identical to those for which the claimant had secured registration. Therefore, in the High Court's view, the defendants had little or no realistic prospect of defending a claim brought against it for infringement.
Had the defendants not already changed the company's name at the time summary judgment was granted, to a name not including the letters "ALM", then the Court indicated that the defendants would have been ordered to do so. This is worth noting as a very possible consequence for those companies potentially infringing a trade mark by using that trade mark in a company name, intentionally or not.
