Select And Enforce Trade Marks With Care

You have registered your business name as a trade mark and built up goodwill over several years.

Then along comes another business using your registered trade mark to promote its similar services in another part of the country.

You would definitely win a claim for trade mark infringement and passing off, right?

Wrong.

The correct answer, as illustrated by a court case last month [Oct07], is: “it depends!”

In Bignell v Just Employment Ltd, Mr Bignell, the owner of a law firm called Just Employment which had operated since 1997 in Guildford, owned a registered trade mark in the words ‘JUST EMPLOYMENT’.

He sued a company, Just Employment Ltd (JEL), which offered similar employment law services from offices in Glasgow and London, for trade mark infringement and passing off. But he lost on both fronts.

“At first sight, it is unsurprising that Mr Bignell is aggrieved,” remarked the judge.

Why, then, did he lose? The case illustrates aspects of intellectual property law which all businesses would do well to heed.

Mr Bignell had registered ‘JUST EMPLOYMENT’ as a trade mark in 2000, and his marketing logo featured those words prominently.

JEL was launched in 2004 and, from 2006, it started using a marketing logo featuring the words ‘JUST EMPLOYMENT LAW’.

Mr Bignell told the court six people had contacted his office as a result of JEL’s advertisements, and three witnesses gave evidence about confusion stemming from them. There was no evidence, however, of anyone having contacted JEL mistakenly believing that the company had anything to do with Mr Bignell’s firm in Guildford.

Mr Bignell lost his trade mark infringement claim for two reasons.

First, the court decided that the words ‘JUST EMPLOYMENT’ were “descriptive” of the firm’s services, and the registered trade mark was therefore invalid.

Second, although the mark was “descriptive”, the words ‘JUST EMPLOYMENT’ might potentially have gained validity by acquiring distinctiveness through subsequent usage, but the judge decided that even if Mr Bignell’s use of ‘JUST EMPLOYMENT’ had gained a distinctive reputation within the South East, it had not acquired the necessary distinctiveness across the country.

So, having won on the trade mark point, was JEL still liable for passing off?

No, said the judge. Mr Bignell’s reputation was local, not national; there was only limited confusion, and no evidence of any diversion of business to JEL, so any damage was “insignificant”.

The case is a stark reminder that care is needed when choosing words to register as a trade mark and deciding whether to bring claim infringement.

Had Mr Bignell not registered “descriptive” words, his trade mark would have been validly registered and he would have won his infringement claim.

It’s also a reminder that passing off claims always depend on the facts. Had JEL solicited business in and around Guildford, for example, Mr Bignell’s passing off claim may well have been successful.

Published 07/11/2007. The author of this article is Nigel Hanson