TRADEMARK CASE STUDY

Trademark Case Study

Trademark Case Study

British Sugar Plc v James Robertson & sons Ltd 1996 R.P.C. 281

The trade mark registration Acts up until 1994 stood firmly in the way of wealthy traders. Where they adopted marks which other traders were likely to want to use descriptive1y they found it either difficult or impossible to register their marks. The same applied to laudatory words and to important geographical marks, such as York. In some cases this policy may have gone too far: registration was denied even to marks which were "100% distinctive", ie those which had, through both use and recognition as trademarks, come to be taken by all concerned as denoting the proprietor's goods.

The Trade Marks Act 1994, implementing an EC Directive (189/104/EEC. 21 December 1988) has swept away the old law. A mark which is 100% distinctive will almost certainly be registered now. I am not concerned with such a case. I am concerned with a much commoner sort of case: where a trader has made some use of a common laudatory word along with a distinctive mark. He can show that the word has achieved some recognition (quaere as really denoting trade origin on its own) but no more. Can he then avail himself of the Act to get a monopoly in the common word? If he can, then the 1994 Act enables big business to buy ordinary words of the English language as trade marks at comparatively little cost. In this case the word is "treat" for dessert sauces and syrup. British Sugar Plc sue James Robertson & Sons Ltd for registered trade mark infringement. Robertson's counterclaim for revocation of the registration. British Sugar's products are well-known to the public under their mark "Silver Spoon" which appears on a large range of their products in an oval device. The Silver Spoon range consists of the following products: sugar (in a range of 12 forms, eg caster, icing, preserving, cubes), meringue mix, golden syrup, black treacle and a sweet syrup product which they call "Treat".

There are currently 5 flavours of this product, namely maple, dark chocolate, milk chocolate, strawberry and toffee. The main use of the syrups is for pouring over desserts, particularly ice-cream. It comes in a squeezable plastic bottle provided with a small hole in the cap through which a thin stream of the syrup can be dispensed. Silver Spoon Treat syrups are currently successful, particularly for ice-cream toppings. They have about 50% of the ice cream topping sector of the market. (The figure is given for dessert toppings in Mr Godwin's witness statement but he made it clear in evidence that the sector was essentially icecream toppings). In supermarkets it is placed in the section containing desserts and ice-cream toppings. Sometimes ice-cream toppings are placed next to ice-cream rather than with desserts generally, in which case the Silver Spoon Treat product will be with the other ice-cream toppings. Not surprisingly the label shows a picture of ice-cream onto which ...