Jessie Bowhill appeared for the successful Defendant in this trade mark infringement and passing off case concerning the use of the word SUPREME in relation to pet food.
The Claimant was the registered proprietor of a number of UK and Community registered trade marks for the word SUPREME, and stylised versions of the word, registered in relation to a variety of goods including animal foodstuffs. The Defendant was the proprietor of the Mr Johnson’s brand, and had sold a range of rabbit food called MR JOHNSON’S SUPREME since the mid 1990s. In 2012 the Defendant rebranded and extended the SUPREME range across a wider range of feeds for small animals. It was this rebrand that prompted the complaint by the Claimant, who brought proceedings for trade mark infringement under sections 10(1), (2) and (3) of the Trade Marks Act 1994 and passing off.
The week long High Court trial was heard in January 2015 by Mr Justice Arnold. He found for the Defendant for a number of reasons, including that by virtue of the long established honest concurrent use in accordance with Budvar v Anheuser-Busch, there was no effect on the origin function of the Claimant’s Marks (or indeed any other function). The Judge further considered that had there been infringement, the Defendant’s use would have been use of a descriptive indication in accordance with honest business practices such as to afford it the benefit of the defence provided by section 11(2)(b) of the Trade Marks Act 1994. In addition to finding for the Defendant on trade mark infringement and passing off, the Judge held that three of the Claimant’s Marks were invalidly registered save in relation to small animal food.