Who: Supreme Petfoods Limited (manufacturer of rabbit and guinea pig food) / Henry Bell & Co (Grantham) Limited (another manufacturer of rabbit and guinea pig food, including the Mr Johnson’s range).
Where: High Court, England and Wales
When: 12 February 2015
Law stated as at: 13 March 2015
What happened:
Henry Bell’s Mr Johnson’s range of pet food was found not to have infringed Supreme Petfoods’ UK and Community trade mark registrations for the word mark SUPREME and Supreme device marks.
Supreme Petfoods had sold a variety of small animal food products since the early 90s, with its leading product being Russell Rabbit.
Supreme Petfoods’ products were mainly sold and marketed by reference to the product names but the marks “Supreme” or “Supreme Petfoods” were also featured, to a greater or lesser extent, on some of the packaging.
Henry Bell acquired the Mr Johnson’s range of small animal food products in 2009. The word Supreme had been used, also since the early 90s, in the names of the Mr Johnson’s range of products, including “Supreme Rabbit Mix” and “Supreme Guinea Pig”.
Supreme Petfoods had previously raised concerns about the use of Supreme in combination with a banner on the packaging of the Mr Johnson’s range (Supreme Petfoods’ branding also made use of a banner). However, Supreme Petfoods’ latest objection to the use of the word Supreme only surfaced when Henry Bell launched new packaging for the Mr Johnson’s range in early 2012.
Not surprisingly, Mr Justice Arnold found that the word mark SUPREME was not inherently distinctive for animal food. One of the dictionary meanings of the word ‘Supreme’ is of the ‘highest quality’ and it was therefore descriptive of such goods. However, although he thought it was a borderline case, Arnold J went on to find that Supreme Petfoods’ SUPREME mark had acquired distinctive character in the UK for “small animal food”. This was despite his findings that Supreme Petfoods’ products were mostly sold by reference to the product names and evidence that “Supreme” had low brand awareness.
As a consequence, Supreme Petfoods’ trade mark registrations for SUPREME and a stylised Supreme device were found to be validly registered for “small animal food”. However, Mr Justice Arnold reached the conclusion that these marks were not infringed by Henry Bell for three reasons:
(1) in his view, Henry Bell was not using SUPREME for the purpose of distinguishing its goods, that is to say as a trade mark, but rather its use would be understood by the average consumer as being purely descriptive;
(2) the fact that the Mr Johnson’s range had co-existed with Supreme Petfoods’ own products for over 20 years without any confusion, led him to conclude that the use of the sign did not adversely affect the origin function of Supreme Petfoods’ marks; and
(3) Henry Bell had a descriptive use defence because its descriptive use was in accordance with honest practices in industrial and commercial matters.
Why this matters:
It has always been the case that trade marks that are descriptive or laudatory in nature are more difficult to protect and enforce. It is probably not surprising then, that Supreme Petfoods’ SUPREME mark was not infringed, given the descriptive nature of the word and both parties’ long standing use of ‘Supreme’ without any apparent confusion. However, Mr Justice Arnold’s reasoning suggests:
1) that it may be relatively easy for descriptive brands to acquire the necessary distinctiveness to secure or maintain a trade mark registration;
BUT
2) that it may be difficult to enforce even valid registrations for descriptive marks as a defendant could argue that their use, even when it is part of the name of their product, is descriptive.
The case serves as a reminder of the inherent weaknesses of descriptive marks and emphasises that even a valid registration does not necessarily confer exclusive rights to any use of the mark.
