England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building 7 Rolls Buildings London, EC4A 1NL
		21st February 2012

His Honour Judge Birss QC :

1. This is a case management conference in a trade mark dispute essentially between Weight Watchers (UK) Limited ("Weight Watchers"), that is to say the well known organisation that uses the name "WEIGHT WATCHERS", and a group of defendants, who use the brand "WAIST WATCHERS" to sell sandwiches. The defendants are essentially a company called Love Bites Limited.
2. Weight Watchers are obviously well known. They organise classes to help people lose weight and they also license their brand such that products are sold under the WEIGHT WATCHERS mark. I think it is also fair to say that the claimants themselves sell products under the WEIGHT WATCHERS mark. The general theme of the supply of products by licensees under the brand WEIGHT WATCHERS is that the goods are for helping lose weight or are goods with a low calorific value.
3. The claimants complain that the defendants are infringing the trade mark by using the trade mark "WAIST WATCHERS". Their case is based on section 10(2) and 10(3) of the Trade Marks Act 1994.
4. During the course of the case management conference, I asked the parties whether they would be willing to entertain the expression by the Court of a preliminary and non-binding opinion as to the merits of the case. Both sides said that they were willing and indeed wished to embark on that course. Accordingly, I heard brief submissions from Miss Jamal, who appears for the claimants, instructed by Clifford Chance, and from Mr Sampson, who appears for the defendants, instructed by Atkinson and Firth Solicitors. This is my judgment, having heard all the parties. 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.
5. The case as pleaded under section 10(3) of the Act by the claimants was traversed in the original Defence in a manner which was plainly wrong in law. The Defence to the section 10(3) allegation was, and was only, that the goods being sold by the defendants are not "not similar" to the goods for which the marks are registered by the claimants. One can understand why it might have been that someone might have thought that would have been a defence because, if one reads the way the Act was originally written, it would appear to be a defence to the allegation of infringement under 10(3). However, it is quite clear as a matter of law, and has been clear for a number of years, that that is not a defence and that infringement under section 10(3) or Article 9(1)(c) of the Regulation does not depend on the goods of the defendant being "not similar" to the claimants' relevant goods. That was made very clear in decisions of the European Court of Justice and is beyond argument now since the Act was amended. Accordingly, Mr Sampson realistically accepted that that part of the Defence needed to be struck out and he sought permission to put in a new Defence which traversed, he would submit on proper grounds, the case under 10(3). Part of the case that I need to consider consists of the matters raised in the new draft Defence.
6. In summary, Miss Jamal submits that her client has an overwhelming case. It is a plain case of infringement and there is really no argument about the matter.
7. The way this action began is that the defendants started using the mark WAIST WATCHERS in approximately 2006. Relatively soon after that, the claimants wrote to the defendants. No agreement was reached and the defendants continued to do what they were doing. The claimants' position is that the scale and significance of the defendants' activity was sufficiently minor that they did not regard the matter as being important enough to deal with in any detail.
8. The defendants applied for and obtained registered trade marks for WAIST WATCHERS. Then, in August 2010, the defendants' solicitors wrote to the claimants' solicitors essentially stating that they had been now in business using the mark for about three years and they were, in summary, offering to sell the brand to the claimants. In the letter there was also a statement that they intended to expand the use of the brand name because they felt it had been a successful one and they were considering specifically expanding it into licensing other products to use the sign WAIST WATCHERS. This caused the claimants to believe that the problem was becoming much more significant and ultimately proceedings were issued.
9. Between receiving this letter and proceedings being issued, the claimants conducted a survey seeking to establish their case that the WAIST WATCHERS mark as used by the defendants was either infringing under section 10(2) or under section 10(3). Miss Jamal submits that the survey establishes that. Mr Sampson, in my judgment rightly, points out that surveys are often difficult to do and can be readily criticised and that of course no survey could ever be a substitute for the decision of a court based on all the facts and circumstances.
10. Proceedings were issued and the case proceeded, the pleadings being in the form I have already mentioned.
11. The case under section 10(2) is straightforward. The allegation is that WEIGHT WATCHERS and WAIST WATCHERS are too similar and, therefore, ultimately the test under section 10(2) is satisfied. Of course, the defendants deny this. They submit that WAIST WATCHERS is not too similar to WEIGHT WATCHERS, that there is no likelihood of confusion and, therefore, there is no breach under section 10(2). One of the points the defendants make is that they have seen no evidence that any of their customers or anyone seeing their mark has ever been actually confused by that mark.
12. Under section 10(3), the position is more complex because of the nature of the subsection. Miss Jamal points out that section 10(3) can be broken down into four possible limbs. Once one has established that the mark has a reputation, the defendants have a similar mark and there is some link between the claimants' mark and the defendants' mark, infringement is established if there is taking unfair advantage of or detriment to either the distinctive character or repute of the claimants' mark. That takes two limbs, unfair advantage and detriment, and two other limbs, distinctive character and reputation. Therefore, one can have permutations of four different varieties of problem. The point being made by Miss Jamal is that the draft Defence, while it may deal with some of the allegations that have been made by the claimants, does not deal with all of them. It seems to me that it would be of assistance to deal with that in a little more detail.
13. The case being put under 10(3) is pleaded in paragraph 40 of the claimants' Particulars of Claim. Essentially, six matters are put forward to support the claimants' case, which I should say is advanced on all four of the possible permutations. The claimants rely on:

(a) the distinctive character and reputation of the trade marks, as set out in their pleading already;

(b) the degree of similarity between the two trade marks;

(c) the fact that the goods in relation to which the defendants use WAIST WATCHERS are extremely similar to those for which the trade marks are registered;

(d) the fact that the goods in relation to which the defendants use WAIST WATCHERS are identical to the some of the goods of the claimants' licensees;

(e) the fact that the defendants' sandwiches or other products have not been through the security and quality checks which the claimants require for its products to be sold under or by reference to the claimants' marks, including for example checks as to the dietary nature of the products and the company statements on packaging as to their dietary and/or low calorie nature; and

(f) an allegation that the striking similarity between the WAIST WATCHERS sign used by the defendants and the claimants' trade marks strongly suggests that the signs were deliberately copied from the trade marks by the defendants in order to create an association in the minds of the public between the signs and the trade marks and/or to take advantage of the distinctive character of the trade mark without paying any kind of compensation to the claimants or expending any marketing or promotional efforts of their own.

14. Mr Sampson's draft amended Defence, which is annexed to his skeleton argument, deals with the following points in paragraphs 61 to 65.
15. In new draft paragraph 61, there is a denial essentially of the allegation as a whole. Therefore, 61 does not address a specific point.
16. In paragraph 62, following some discussion between myself and Mr Sampson to deal with what I regarded as ambiguities in the pleading, it is now clear that the allegation being denied is the allegation of deliberate copying, that is to say allegation (f) of the claimants' case. Two points are put in paragraph 62. Mr Sampson explained that the basic denial of deliberate copying is the real point. Coupled with it or as part of it but not as an independent point, the argument is also made that the defendants did themselves have a subsisting trade mark. Therefore, it is said, irrespective of whether the defendants' mark is invalid or not as the claimants allege, the subsistence of that mark is relevant to this question of deliberate copying. Then it is contended, if deliberate copying goes, the allegation of use without undue cause should fail.
17. It seems to me that deliberate copying is an arguable point, and it is certainly no part of the Court's function at this stage to resolve that. What I can say, on the basis of the evidence I have seen, is that the claimants have a sensible and arguable case that there has been deliberate copying. On the other hand, this is exactly the sort of case where I can also see that the defendants have a perfectly sensible and arguable defence to say that there has not been deliberate copying. I should say that, if it was suggested that the allegation that the defendants had a subsisting registered trade mark on its own was an answer to section 10(3), I would have difficulty with that submission, but that is not the case that Mr Sampson is putting. That then deals with 40(f). It seems to me that 40(f) is not an allegation that I can resolve or even express a preliminary view about other than what I have already said.
18. Mr Sampson's paragraph 63 is a plea which was clarified in the course of discussion and actually arises from a typographical error in the Particulars of Claim. I need say no more about it.
19. Paragraph 64 contains a submission that the fact that the goods are very similar or identical does not in and of itself support 10(3). That is undeniably correct, but also ultimately not a point which is of sufficient weight to take the defendants very far. It is true that the fact that there is a very similar or identical product would not in itself be sufficient. It is however, a highly relevant factor and it seems to me that paragraph 64 does not amount to a substantive defence from the defendants' point of view, although it is a point they are entitled to make.
20. Paragraph 65 has two limbs. Ultimately, although again there was some lack of clarity in the way it was put, which was perhaps more in my mind than Mr Sampson's pleading, paragraph 65(a) is an assertion of fact that the defendants' standards of production and nutritional quality are such that they cannot damage or be detrimental to the claimants under section 10(3). It is not a point of principle, it is a point as a matter of fact and evidence that the defendants are saying that their production standards and nutritional quality either looked at on their own or looked at for what they are in comparison to the claimants' standards, are not such as to cause any detriment to the claimants. That is a question of fact and, again, I am in no position at this stage to express any view on the merits of it as a point. In other words, I cannot say whether the sandwiches produced by the defendants are good, bad or indifferent. If they are presently good, that may have a bearing on the allegation of detriment.
21. However, Miss Jamal submits that although it may be the case that the defendants' sandwiches as they stand at the moment are delicious and low calorie, that is not the totality of the point being made. She submits that it does not matter how good they are, the fact that the sandwiches are not under the claimants' control is relevant to the question of taking unfair advantage of or detriment to the distinctive character of the claimants' marks. That is a matter to which I will return below. It does seem to me that Miss Jamal is correct that, if her point is a good one, then paragraph 65(a) does not traverse the lack of control point at all. In fact, it is perfectly obvious that the claimants do not have any control over the standard of quality of the sandwiches produced by the defendants. Nor do they have any control over the standards which will be applicable to the other products which the defendants have made clear they intend to license others to sell under the WAIST WATCHERS mark.
22. Finally, under 65(b), Mr Sampson pleads that there would have been no reason for the defendants to pay financial compensation to the claimants for the use of their valid and subsisting WAIST WATCHERS trade mark and that there are no grounds pleaded or in fact any reason to believe that the use of the WAIST WATCHERS trade mark rides on the coat tails on the promotional affects of the claimants. As such it is said there is no basis for a finding that the defendants have taken an unfair advantage of the claimants' WEIGHT WATCHERS mark. Mr Sampson submits that, with all due respect to the claimants' pleaded case, all the claims with regard to detriment and unfair advantage are merely speculative.
23. There was a suggestion that the defendants wished to apply to strike out the section 10(3) allegation made by the claimants on the ground that it was merely speculative. Mr Sampson explained to me that he did not wish to press that at this stage but suggested that it was a matter that could be returned to after disclosure. Having thought about the claimants' claim, it seems to me that the suggestion that the claim under section 10(3) is speculative is, if I may say so with respect, completely wrong. In my view, the case under section 10(3) at least is an arguable and proper case and I cannot imagine any basis on which it could be struck out. That is important because it means that, now that I have analysed the Defence on the basis of what I have seen, Miss Jamal's submission is right. There are significant parts of the case being put against the defendants which the Defence just does not address. I do not mean that as a criticism of Mr Sampson at all. He has advanced sensible points on the facts on behalf of his clients which would be the sort of thing which counsel in his position would be expected to advance.
24. The difficulty and the important point is that, on the basis of the material before me, it seems to me that there is a strong case that the defendants are likely to be found to infringe the claimant's trade marks. I should make it clear, as I have said already at the outset, that this is the expression of a preliminary view, but, on the basis of what I have seen, it seems to me that the claimants have a strong case that the defendants are in fact infringing and that includes the case under section 10(3). I think it is highly likely that the Court will find that WAIST WATCHERS is a mark which will, in the mind of an ordinary consumer, form a link with WEIGHT WATCHERS and that link is one which will very likely cause a detriment to, or take an unfair advantage of, the distinctive character or repute of the claimants' mark.
25. I accept that the tarnishing allegation is one that I cannot and could not deal with and, indeed, the question of deliberate copying is also one which I cannot and could not deal with. But it seems to me that the fact that the defendants are suggesting that they will license their WAIST WATCHERS mark (even if they stick to sandwiches), coupled with the fact that the claimants already do that, is important. At the end of the day the public are likely to link these marks and that means in this case that the claimants will be losing control of their reputation.
26. I must say in conclusion that I do have considerable sympathy with the defendants in that they did what would be regarded as the proper thing and applied to register the mark they were using. Of course, the trouble is that the system we have, for good reason, does not involve a relative test of validity of a mark when it is applied for. Accordingly, it was no part of the Registry's function to consider whether WAIST WATCHERS was too close to WEIGHT WATCHERS. As I said, I do have considerable sympathy with the defendants that they did the proper thing and applied to register the mark. However, it seems to me that, on the basis of what I have seen, there is a strong case that the defendants' WAIST WATCHERS mark is infringing and that will mean that there is also a strong case that the registered marks that the defendants hold are probably invalid. That is my preliminary view.
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