This case concerns an application for injunction owing to an alleged trademark infringement and passing off.
The claimants initially exported their goods to Trinidad and Tobago, but in 1970, they licensed a local company to manufacture the goods. The product had a registered trademark, which was due to expire on June 8, 1976. The mark comprised of a bunch of mixed temperate fruit with the words ‘Fruit of the Loom’ inscribed above the fruit and was registered in Class 38 with respect to clothing. The goods were sold in a clear plastic bag bearing the registered mark.
In February 1976, the defendants obtained registration of a similar mark in the classes of cotton piece goods and synthetic fibers, including sheets and pillowcases. The defendants sold similar goods in clear plastic bags with a label that was alleged to be similar to the claimants, thereby causing confusion; the bag had a label with a branch of mixed fruit and the words ‘Tropical Fruits’ printed in the same or similar print as the claimant’s product.
A letter was sent to the defendant by the claimant informing them of the infringement and requesting that they cease using the trademark or otherwise face legal action. The defendant responded, denying any infringement but offering to discontinue the brand if permitted to use the remaining 20,000 plastic bags that were in stock, noting that it was a former partner’s idea to use the imagery on the plastic bags. The claimant agreed to allow the defendants to use the bags up until December 31, 1976, but a request for an extension was made owing to the defendant not being able to manufacture goods due to a shortage of material. An extension was granted with an undertaking that damages will be paid if the goods continue to be sold past the deadline. No undertaking was in fact given by the defendant. On December 7, 1967, the defendants wrote again asking for a further extension, which was granted to March 31, 1968, and noted by the claimant as the final extension.
The question the court had to decide was whether the defendant’s use of the mark fell within s. 5(1) of the Trade Marks Ordinance 1955. In other words, was the mark likely to cause confusion or deception – was there an intention to deceive?
The claimant was required to prove that the mark and their goods had become distinctive in the eyes of the buyer. Claimant’s counsel presented no evidence of deception or confusion, simply relying on the argument of ‘similarity’ in appearance and the likelihood that the public would be deceived. The defense argued that there must be evidence of an intention to deceive but the court, relying on Kelly on Trade Marks (8th ed.), p. 334, found that the absence of an intention to deceive is no defense. As such, the court was left to make a determination without evidence of deception and decided that the defendant’s label was an imitation of that of the claimant.
On the question of passing off, the court had to decide whether the conduct of the defendant in using a similar mark was likely to cause confusion or damage to the claimant’s trade. It was held that the after repeated extensions by the claimant permitting the defendant to use the mark temporarily, the continued use by the defendant of the mark no longer remained innocent.
The court was satisfied that the average purchaser would mistakenly purchase the defendant’s good thinking it was claimant’s, despite the differences of (a) ‘Tropical ’fruit' versus ‘Fruit of the Loom’, (b) different colors and (c) different sizes in the labels:
“The arrangement is so similar that the colour tones and differences in the nature of the fruit became insignificant and the whole representation is, as I have already said, a colourable imitation of the C’s get up or package…” – p. 449, I.
The use of ‘Tropical Fruit’ further demonstrated deception on the part of the defendant. Finally, the court found that the defendant’s mark was a copy of claimant’s and continued use constituted infringement. As such, the injunction was granted prohibiting the defendant from using the mark of the claimant.
Cases referred to:
Spalding v Gomage (A.W.) Ltd., [1914] 2 Ch. 405; 83 L.J. Ch 855; 111 L.T. 829; 58 Sol. Jo. 722.
Jay v. Ladler (1888), 40 Ch. D. 649 L.T. 27; 37 W.R. 505; 5 T.L.R. 57; 6 R.P.C. 136.