Case No: CC12P01007
Neutral Citation Number: [2012] EWPCC 43
IN THE PATENTS COUNTY COURT

Rolls Building
7 Rolls Buildings
London EC4A 1NL

Date: 20/09/2012

Before :

HIS HONOUR JUDGE BIRSS QC
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Between :

	(1) FAYUS INC.
(2) FATAI ADELAJA YUSUFU	
Claimants	
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	FLYING TRADE GROUP PLC	Defendant	

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Michael Hicks (instructed by Redd Solicitors LLP) for the Claimants
The defendant is represented by its Group Legal Department

On paper
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Judgment
HIS HONOUR JUDGE BIRSS QC : 
1.	The first claimant is an American company which carries on business as Fayus Enterprises.  It is the successor in business to the second claimant.  The changeover took place in December 2006.  In about 1997 the second claimant launched a range of indigenous African and other ethnic products under the mark “Ola-Ola”.  The claimants’ Ola-Ola goods have been imported into the United Kingdom and sold here since 2004.  The UK distributor has been a business operated by a Mrs O Y Bello first under the name “Foodsome” and then “Funbel Ventures”.  The Ola-Ola goods in the United Kingdom have consisted of Ola-Ola pounded yam, Ola-Ola carotino oil and Ola-Ola plantain chips.   The claimants contend that they have built up a goodwill and reputation in the UK under the mark Ola-Ola when used in relation to food products, especially pounded yam.
2.	Financial figures for the UK sales are given in the Particulars of Claim.  The sales in 2004 were small (about £8,000 worth) but by 2009 they had grown to just under £180,000 worth.  In 2011 sales were over £400,000. 
3.	The defendant is a UK company.  It trades as “Surya”.  It sells various food products under a number of marks.  The claimants believe the defendant started selling ethnic food products under the mark “Ola-Ola” in about 2011.  The products sold include pounded yam, bean flour and semolina. 
4.	The claimants believe there have been instances of actual confusion and deception whereby members of the public have bought the defendant’s Ola-Ola branded goods thinking they were the Ola-Ola goods they were familiar with (i.e. the goods of the claimants).  The claimants believe the use of the Ola-Ola brand by the defendant amounts to passing off. 
5.	The claimants also rely on the striking similarity between the appearance of the claimants’ Ola-Ola mark and the defendant’s mark, leaving aside the identity in the word “Ola-Ola”.  Both marks are presented in capitals in a yellow arc with a rounded black outline.  The defendant’s form has the letters in white with a black outline whereas the claimants’ are in black script. The only other difference is that the defendant’s yellow arc has flat outer ends whereas there are the curved ends on the claimants’ arc.  The defendant’s logo also has the words “Taste of Africa” underneath, 
6.	On 19th October 2010 the defendant applied to register the word(s) “Ola Ola” as a trade mark in classes 29, 30, 31 and 32 (UK Trade Mark No. 2561692).  The claimants believe that this mark is invalid as being contrary to s5(4)(a) of the Trade Marks Act 1994.  Section 5(4)(a) will be satisfied if the use of the mark on the goods is liable to be prevented by the law of passing off.  The claimants also believe the registration was in bad faith contrary to s3(6) of the 1994 Act.  In support of the allegation of bad faith the claimants rely on two 2007 decisions in the Trade Marks Registry in which companies connected with the defendant have been found to have applied in bad faith to register trade marks used by other companies. 
7.	The claimants brought proceedings for passing off and to declare the UK registered trade mark invalid. 
8.	The defendant’s Defence does not accept the claimant’s sales figures for the period 2004 to 2011 and puts the claimants to proof.  The defendant also suggests that the claimants’ high sales from 2010 onwards are in part attributable to the defendant supplying large UK supermarkets and that the claimant has benefitted from the defendant’s marketing and promotional activities.  The defendant points out that the claimants are based in the USA and claims that the goodwill in the brand did not exist prior to October 2010.  It also suggests that any UK goodwill might belong to Funbel Ventures since they are claimed to be the UK distributor. 
9.	The defendant states that it first contacted its designers to prepare sample designs of the name Ola Ola in late 2003 early 2004.  The Defence states that the defendant is going to retrieve what it can from its archives to support this. 
10.	The Defence states that the defendant has not intentionally copied the design of the claimants’ brand.  It states that the word “Ola-Ola” is a “generic African” word meaning “all good” and states that the defendant never had any knowledge of the claimant or its trade in the UK.
11.	The defendant denies that it knowingly breached s3(6) or 5(4) of the Trade Marks Act 1994. The defendant did not know about the claimant and did not act in bad faith.  The Defence ends by denying that the claimants have suffered any damage.  It is signed with a statement of truth of Suki Dulai, Managing Director of the defendant.  
12.	The claimants’ reply deals with various points made by the defendant.  The claimants deny “Ola-Ola” means “all good” or anything like it in any language of which the claimants are aware and states that in any event the name is distinctive in the UK. 
13.	The case management conference took place before me on 20th July 2012. The defendant did not attend.  Directions were given and a date fixed for trial.  One matter discussed in court was whether the court would be prepared to give a preliminary, non-binding opinion on the merits along the lines of my decision in Weight Watchers v Love Bites [2012] EWPCC 11.  In that decision (paragraph 4) I said the following about the preliminary and non-binding opinion provided in that case: 
4. […] I should emphasise again that this is a preliminary view.  It is not intended to be binding on me and it is not binding on the parties.  It is something, however, which has been ventilated as a possibility that will be conducted in the Patents County Court.  It seems to me that in an appropriate case it may well be a useful procedure.  Also, as I have already indicated, it is a procedure which, in fairness to both sides, the Patents County Court will only embark on when both sides agree that it should be done.
14.	The procedure is one which must be used with care and in fairness to both sides.  Since the defendant in this case was not in a position to agree or disagree to this course I told the claimants’ representatives that I was not prepared to embark on expressing such an opinion at that stage.  However the directions made at the hearing included a provision giving the defendant the opportunity to state whether or not it was prepared to consent to the court expressing such an opinion.
15.	It is likely that an appropriate circumstance in which this procedure might be used is one in which it may well help the parties to settle a case (c.f. CPR r 1.4(2)(f)).  If the expression of a view is not likely to help the parties settle then it is hard to see what purpose it could achieve.  If both parties wish to ask the court to express such an opinion then it is likely to be useful in helping them settle.  
16.	The parties’ cases are explained fully and clearly in their statement of case.  There is no need for further submissions from either side.  Taking this course is proportionate.  The likely benefit achieved from the step will justify the cost of taking it (c.f. CPR r 1.4(2)(h)).
17.	By a letter dated 3rd September 2012 the defendant indicated its consent and on 13th September the claimants’ solicitors requested the court to provide that opinion and provided a copy of the case management conference bundle for that purpose.  
Preliminary opinion
18.	There is nothing in the defendants’ Defence which really undermines the claimants’ case that its Ola-Ola branded goods have been on sale in the UK since 2004.  The fact the initial sales may have been small does not matter.  The law of passing off will protect goodwill on a relatively small scale although it will not protect goodwill that a reasonable person would regard as trivial (Mr Justice Laddie in Sutherland v V2 Music [2002] EMLR 28 at p568).  In Stannard v Reay [1967] RPC 589 a “Mr Chippy” chip van that had been trading on the Isle of Wight for three to five weeks was held to be sufficient to generate goodwill on its own facts.
19.	I very much doubt the sales figures from 2004 - 2007 would be regarded as being so small as to be trivial but I am sure the sales from 2008 onwards are not trivial.  In 2008 the retail sales value of the claimants’ Ola-Ola goods in the UK was estimated to be £157,504.  
20.	Passing off has to be assessed at the point the Defendant started the conduct complained of (see the Pub Squash case, Cadbury Schweppes v Pub Squash, [1981] RPC 429 in the Privy Council).  The defendant does not state when it started selling Ola-Ola goods in the UK.  I infer it started in about 2010.  That is the year the defendant applied to register the UK trade mark. 
21.	Even if the word “Ola-Ola” has a meaning in an African language, it has no meaning in English and there is no reason to my mind why a goodwill and reputation could not subsist in it.  
22.	The defendant is using the same name (Ola-Ola) on the same sorts of goods as the claimant.  These included pounded yam and other goods.  In my opinion the claimant has a strong case of passing off against the defendant.  There is really no defence.  The Defence indicates that the defendant adopted the name Ola-Ola without any knowledge of the claimants or their goodwill in the name.  Even if that is so, it does not provide a defence to passing off.
23.	By the same token the claimants’ have a strong case that the defendant’s UK trade mark registration is invalid under s5(4) of the 1994 Act.  Its use in the UK is liable to be prevented by the law of passing off.  In my judgment the claimants are likely to win this case both in passing off and in relation to the invalidity of the defendant’s trade mark. 
24.	The claimants also allege that the mark was registered in bad faith (s3(6) 1994 Act) but they do not have to win the allegation of bad faith in order to win the passing off case or achieve invalidity of the defendant’s UK trade mark registration.  The claimants can refer to the close similarity between the defendant’s “Ola-Ola” logo and the claimants’ logo.  It is striking.  The defence does state that the defendant contacted designers in late 2003 early 2004 to prepare sample designs of Ola-Ola.  However I note that in the defendant’s disclosure statement provided on 3rd September 2012, the defendant has indicated that it has searched for documents from 2003 to January 2006 but has not been able to produce any.  This is in part due to changes in computers since that time.  Accordingly there is no documentary material to support the defendant’s case here.
25.	On the papers available to me, I cannot say whether the mark was applied for in bad faith, but as I explained above, the claimant does not have to win that point to win the case.
Conclusion
26.	On the basis of what I have seen, there is a strong case that the defendant’s use of the Ola-Ola mark amounts to passing off and that will mean that there is also a strong case that the defendant’s UK registered mark is invalid.  That is my preliminary view.