Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)
[2011] EWHC 1879 (Ch)
This was a trademark infringement case in which a brewery held a registered trade mark in a stylised white rose which it used on its bottled beer and alleged infringement by another brewery releasing bottled beer with a label containing a white rose.
The two beers in issue produced by the defendant were Yorkshire Bitter and Yorkshire Warrior. Yorskhire Bitter was supplied to a supermarket. The supermarket took responsibility for the label which contained a white rose. The claimant sent a letter to the supermarket alleging trade mark infringement and passing off. The supermarket and the claimant concluded a settlement agreement and the supermarket commissioned a new label.
The label for Yorkshire Warrior was designed by the defendant and replicated the badge of the Yorkshire regiment. The MOD had declined to license the use of the regiment badge for this purpose because of the claimant’s trademark registration. Despite this the defendant continued to use the badge on his label.
The infringing beer and the beer of the registered trade mark owner
For the trade mark infringement claim in respect of both beers to succeed the claimant needed to establish that there was a likelihood of relevant customers being confused as to the trade origin of the beer.
The judge considered that the identical goods and the distinctive character of the registered trade mark pointed towards a likelihood of confusion but that the differences between the white rose device used by the label and the registered trade mark, together with the clear identification of the brewer responsible for the beer, militated against it. It was concluded that there was no likelihood of confusion.
The Yorkshire Warrior label however used a white rose much more similar to the registered trade mark. Furthermore the rose was a much more dominant element of the overall label and the brewer of the beer was not prominently identified. This together with the evidence of three witnesses lead the judge to conclude that there was a likelihood of at least some customers being confused. It was also found that this confusion was damaging to the reputation and goodwill of the mark allowing a claim for passing off to also succeed in respect of this beer.
The judge considered that the white rose symbol, being a badge of the Yorkshire regiment was capable of indicating that the beers sold under it originated from Yorkshire (an indication of geographic origin). This meant that provided the use of it was in accordance with honest practices in industrial or commercial matters it would be possible to raise a defence to a claim that use of the Yorkshire Warrior label amounted to trade mark infringement.
It was considered that until October 2009 the use made of the label by the defendant was in accordance with honest practices, because the defendant believed that he had the consent of the regiment to use it and was not aware of any possible trade mark infringement that might accompany that use. However, after this time the defendant became aware of the registered trade mark held by the claimant and the license to use the badge had been withdrawn. Accordingly since this time the defendant had not acted fairly in his use of the trademark.