England and Wales High Court (Patents Court) Decisions

Mr. Hart QC:

2. At the outset of the trial, it was made clear by the defendant that the defendant was willing to give a permanent undertaking in terms of the final order sought without prejudice to the question of its liability. The parties respective counsel had also agreed that neither wished to cross-examine the other's witnesses, and were content for the witness statements to be taken as read without the need for the witnesses to be sworn. At their request I made a direction under RSC Order 38 rule 2A(17) enabling this course to be taken.

3. The parties were at issue on each of elements of the"classical trinity" of the tort. First, as to the question whether the Plaintiff had acquired goodwill in the name"Farm Fluid", the defendant contended that the evidence only established a goodwill in the name"Antec Farm Fluid" or"Antec Farm Fluid S", the term"Farm Fluid" by itself being so generally descriptive that it could not have, or at least had not, acquired any secondary connotation in which goodwill could subsist. Secondly, as to misrepresentation leading to confusion, the defendant submitted that its addition of the prefixes"SWC" and"Super" to its product sufficed, either jointly or severally, to displace any potential confusion. Finally, the Defendants denied that their trade in SWC Super Farm Fluid either had caused, or, if it were permitted to continue, would be likely to cause, any or more than minimal damage to the plaintiff s goodwill. There is, obviously, a good deal of overlap between the issues thus summarised.

7. A number of other disinfectant products are aimed at the same market in competition with the plaintiff's"Farm Fluid" product. None, however, is sold under a name bearing any resemblance to"Farm Fluid". Nor, on the evidence, has anyone other than Jeyes or the plaintiff ever attempted to sell a general purpose farm disinfectant using the words"Farm Fluid" in the description prior to the launch of the defendant's Super Farm Fluid. There was a suggestion at one point in the defendant's evidence that a Mr Eley had been selling such a product as"Eley's Economic Farm Fluid" since 1981, but (as I find) this was contradicted by Mr Eley's own witness statement to the effect that, while he had developed such a product, and obtained MAFF approval for it under that name, he had never in fact marketed it.

8. On the question whether the Antec product has been marketed and sold as"Antec Farm Fluid S" or as"Farm Fluid S" the evidence was open to a degree of interpretation. In the examples produced to me of the plaintiff's advertising material, the former usage predominates although that is not the impression conveyed by a reading of the plaintiff's witnesses statements. It is not, however, exclusive as the examples at pages 18, 21, and 40 of the exhibit"RA 4" demonstrate. The example at page 32 of the same exhibit shows both usages. So far as the understanding of the ultimate consumer is concerned, the evidence of Mr Auchincloss was that

9. Mr Balmer, a wholesaler of animal health products, said this:

10. It has to be borne in mind that Mr Balmer's business is that of a wholesaler who does not sell directly to farmers. Dr Ryder, the director of an animal health products distribution company, first came across Farm Fluid when he headed the Fisons Animal Health Division, which he did from 1986 to 1994. During his period of employment with Fisons, Antec was Fisons' direct competitor. He said:

11. There is no evidence however that Dr Ryder dealt directly with farmers. The plaintiff's strongest factual witness (apart from Mr Auchincloss) as to the usage of the ultimate consumer was Mr Gordon Edgar Fentiman, an agricultural merchant, who has been a distributor of the Antec Farm Fluid since 1985. He first became aware of it from customers and potential customers

12. The plaintiff also adduced expert evidence on the point in the form of a signed statement by one John Cecil Alborough. He had at one time worked as a sales representative for an agricultural cooperative. He said:

13. He later said:

14. That unchallenged evidence establishes, to my mind conclusively, that the words "Farm Fluid" have come to be associated in the minds of the relevant section of the public (i.e. farmers) with the Antec product now marketed as Farm Fluid S or as Antec Farm Fluid S. Provided that the words "Farm Fluid" are capable of being appropriated as a trade name, it is clear that each of the first four of Lord Fraser's criteria is satisfied. First, the plaintiff's business consists of, or includes, selling in England a class of goods (viz agricultural disinfectant in liquid concentrate form) to which the name Farm Fluid applies; secondly the class of goods is clearly defined, and in the minds of a section of the public the trade name distinguishes that class from other similar goods; thirdly, that because of the reputation of the goods, there is goodwill attached to the name; and, fourthly, that the plaintiff is the owner of goodwill in England which is of substantial value.

15. The defendant's essential contention was the words "farm fluid" are so generally descriptive that they cannot in fact serve, or cannot in law be taken as serving, to distinguish in the minds of the relevant section of the public the Antec product from other similar products. As Laddie J observed in giving judgment at the interlocutory hearing:

17. The first of the two matters mentioned above is a letter from Jeyes Group Limited to Mr Eley dated 22nd July 1981. Mr Eley had written to Jeyes to inquire whether they had any objection to his naming his proposed product "Eley's Economic Farm Fluid". The letter stated:

18. As already stated there was no evidence before me that the word "Fluid" had in fact been used, otherwise than by Jeyes and the plaintiff, in connection with any agricultural disinfectant which had ever been marketed in England and Wales. The fact that Jeyes were, in 1981, of the opinion expressed in that letter is of minimal weight when placed in the scales against the substantial evidence which I have summarised as to the goodwill today enjoyed by the plaintiff in the name.

19. The second matter is that, as the Jeyes letter correctly surmised, Antec's registration of its mark was then, and remains subject to a disclaimer in relation to the exclusive use of the words "farm fluid". The plaintiff's current mark was registered subject to that disclaimer on 7th October 1987. The evidence was that the disclaimer had been insisted on by the Registry, and that the plaintiff had then taken the view that the bother of attempting to register without the disclaimer was not worth undertaking. Again, I do not think that this evidence of attitudes in 1987 to the words "farm fluid" in the context of the registration of a trade mark enables me to discount in any significant way the other evidence before me of the plaintiff's goodwill in the name derived from the reputation of its product.

20. As already mentioned the defendant's product was, prior to the interlocutory injunction, being marketed and sold either as "SWC Super Farm Fluid" or as "Super Farm Fluid" in conjunction with the logo "SWC". There was no evidence of any actual confusion during the period when its product was in circulation. That period appears to have been from about August 1995 until the grant of the interlocutory injunction in November 1996, since when the defendant has been marketing its product as "SWC Maxi-Kleen". The evidence before me as to the size of the defendant's business during the critical period was, as it had been before Laddie J., remarkably thin. On discovery the Defendant disclosed only two invoices to English customers, one dated in May and the other in October 1996, in each case for very small quantities of the product. In each case, the customers were existing customers of the defendant and the defendant's general manager, Susan Crossland, claimed that there had been no sales as a result of any advertisement to the market generally. There is no evidence, apart from that relating to the Stoneleigh agricultural show, of any attempt by the defendant to advertise to the market generally. In those circumstances it is not surprising that the plaintiff was unable to adduce any evidence of actual confusion, and I approach the matter at trial, as Laddie J did on the interlocutory motion, as a claim for injunctive relief against a product only recently launched on a very small scale on to the market.

21. The plaintiff's case was that confusion was likely to arise because orders by farmers for Farm Fluid might lead to their being supplied with the defendant's product, and that farmers who were so supplied might suppose that they had in fact been supplied with the plaintiff's product or an improved version of the plaintiff's product. That was Mr Fentiman's evidence as a distributor at paragraphs 19 to 23 of his witness statement. Dr Ryder's evidence at paragraphs 21 and 22 of his witness statement also spoke to the confusion likely to arise in the mind of the ultimate user. Mr Alborough said that the defendant's leaflet would make a farmer immediately think that there was some connection between the defendant's product and Antec's, and the fact that it was being sold as Super Farm Fluid would by itself do no more than make the farmer think that he was looking at a variation of the Antec product. He did not think that the inclusion of the prefix "SWC" would alter that perception. Many might make nothing of it at all, since SWC is not very well known in the animal health industry. Others might assume that SWC had entered into some distribution arrangement with Antec, and were distributing the Antec product under their own packaging, a common practice in the industry. That supposition as to a farmer's likely state of mind was supported also by Mr Balmer and Mr Fentiman. The point was also made in evidence that, the defendant's initials not being well known in the industry as those of a manufacturer, the prefix "SWC" might simply be ignored by farmers as the kind of mysterious lettering addition frequently included in brand names. It was accepted by all that a distributor or retailer (as opposed to an end user) was unlikely to remain long in a state of confusion.

23. Miss McFarland also relied on the fact that the evidence of all the plaintiff's third party witnesses was tainted by the fact that none of them had ever come across the SWC product in a real life situation, but had, it was to be inferred, been presented with the product by the plaintiff's lawyers who were no doubt anxious to hear a particular story. She submitted that the use by more than one of those witnesses of the example of "Dettol" and "Super Dettol" was indicative of partisanship and a lack of independence in their evidence. That submission comes very close to a submission that I should not treat those witnesses as witnesses of credit, despite the lack of cross-examination and the agreement between counsel that submissions would not be made as to the credit of the witnesses. While I recognise that the process of taking a witness statement may wittingly or unwittingly varnish what would otherwise have been the oral evidence of the witness, and have viewed the product of that process in the instant case with a critical eye, the criticisms which have been made of it do not enable me to reject it in any relevant particular on this issue.

24. Miss McFarland also prayed in aid a passage in Mr Alborough's evidence where he stated:

25. Miss McFarland relied on the italicised passage as an admission by the witness that farmers would not be confused; and she relied on the final reference to "farm fluid" - typed in in lower case - as a recognition that "farm fluid" has a purely generic and descriptive connotation. From those two facts she sought to deduce the conclusion that farmers would not be confused about the different source of Super Farm Fluid. I do not think that this passage, when read in the context of Mr Alborough's evidence as a whole, supports this conclusion. Mr Alborough had earlier stated his opinion that farmers' perception of the source of the product (namely Antec) would not be altered by the fact that it was marketed with the prefix SWC and the adjectival "SUPER" (paragraph 58), and that "such a strong brand name would be sure to lead farmers to assume that Super Farm Fluid is a product connected with the very well known FARM FLUID." (paragraph 62). I cannot read the italicised passage as meaning more than that the farmer would notice he was getting Super Farm Fluid (i.e. an improved version of the Plaintiff's product). Moreover, I do not think that any significance can be attached to the typography of the final reference to farm fluid in the passage quoted. This would, of course, have gone unnoticed had the evidence been led orally in chief, and in my judgment simply represents a slip from the typography otherwise consistently (and somewhat tendentiously) deployed in the witness statement. A passage in the very next paragraph of Mr Alborough's statement makes it abundantly clear what he was intending to convey:

26. Finally, Miss McFarland relied on the evidence of her own witnesses to show the absence of any likelihood of confusion. The evidence of the managing director, Mr Goffe, was that to the best of his knowledge all the persons to whom the defendant had sold its product were completely clear that they were buying a product made by the defendant and not the plaintiff, and were readily able to distinguish the defendant's product from the plaintiff's. However, as already noted, there was evidence of only two customers in England and Wales having been supplied by the defendant. Only one of these tendered a witness statement - a Mr Hepworth of a wholesale company called Farm Assist Limited which, according to the evidence of the invoices disclosed by the defendant, purchased £420.00 worth of the defendant's product in 1996. Mr Hepworth stated that his company had used some of the product itself and sold on part to individual farmers. He said that he was himself not confused as to the source of the product. That would of course be consistent with the evidence adduced by the plaintiff that a distributor would not suffer confusion. He also said that none of the customers who had been supplied with the product had given any indication of any sort of confusion about it. I do not find that evidence of much, if any, weight in deciding whether confusion in the minds of his customers had in fact taken place. If it had taken place in the manner feared by the plaintiff one would not, perhaps, expect any indication of it to be visible to the distributor. The defendant produced another witness statement from a wholesaler in the Republic of Ireland. As to confusion (and some other matters) his witness statement was word for word the same as that of Mr Hepworth (potentially inviting but not in fact attracting the very criticism that Miss McFarland had made of some of the plaintiff's witness statements). Since his evidence was in any event only directed to the position in the Republic of Ireland, I am quite unable to see how it assists me on the issue. By the same token I treat as wholly irrelevant the inference, which the plaintiff invited me to draw from the correspondence between the defendant and its first Malaysian customer, that in naming its product the defendant had been deliberately sailing close to the wind.

27. In my judgment, for the reasons indicated, the plaintiff has established that the marketing and sale by the defendant of a product named SWC Super Farm Fluid would be likely to lead a substantial proportion of farmers to believe that there was some trade connection between that product and that of the plaintiff.

28. Having reached the conclusions which I have, it follows almost inevitably that there is a likelihood that the plaintiff will suffer damage which is more than minimal if the defendant is permitted to use the words "Farm Fluid" in the description of its product in the manner in which it originally sought to do so. That damage might be either from loss of sales or from the consequences of loss of control over the reputation of products bearing the Farm Fluid name.

29. Mr Alborough's evidence detailed a variety of ways in which, once the possibility of confusion is admitted, it might lead to loss of sales of the plaintiff's product. In summary there was a substantial danger that sales representatives, incentivised to sell the defendant's product, would encourage, or at least not take any steps to remove, the possible confusion in the mind of the farmer. The potential for damage to the reputation of the plaintiff's product is self-evident.