UK Patents County Court continues to innovate

Weight Watchers (UK) Ltd & Ors v Love Bites Limited & Ors [2012] EWPCC 11

In a case management conference in a trade mark infringement action in the Patents County Court (PCC), HHJ Birss QC gave a non-binding preliminary opinion on the merits of the case.

The parties consented to the PCC giving its opinion and were invited to make brief submissions. Whilst being careful to give no opinion on matters which required evidential submission, the Judge concluded that the Claimant had a strong case on infringement.

It is clear from the Judge’s comments that he considered such opinions could be useful and it seems likely they may become part of the procedural tool kit utilised in the PCC.

Weight Watchers (UK) Limited, the well-known owner and licensor of the WEIGHT WATCHERS brand and associated UK trade mark registrations, brought a trade mark infringement claim against Love Bites Limited and other Defendants. The Defendants use the name “Waist Watchers” in relation to sandwiches. The Defendants registered UK trade marks for their “Waist Watchers” name. When they announced that they intended to license their brand in relation to other products the Claimant brought the infringement proceedings. The proceedings were based on section 10(2) (identical/similar marks & identical/similar goods with a likelihoods of association or confusion) and section 10(3) (taking unfair advantage of a mark with a reputation) infringement under the Trade Marks Act 1994 (TMA).

The novel aspect of the case was the Judge’s approach in assisting the parties to resolve their issues by way of his non-binding opinion issued at the Case Management Conference stage.

At the Case Management Conference, with the consent of both parties, the Judge offered to provide a non-binding opinion on the merits of the infringement claim as this is currently being considered a potentially useful way to assist the early settlement of claims in the PCC.

In his opinion, HHJ Birss QC explained that on the basis of the material before him he considered there was a “strong case” that the Defendants would be likely to be found to infringe the Claimant’s marks.

The Judge did not address s.10(2) in any detail save for commenting that survey evidence in relation to confusion (as presented by the Claimant in this case) is susceptible to criticism.

In relation to s.10(3) TMA the Judge thought it “highly likely” that the Court would find that WAIST WATCHERS is a mark which will, in the mind of the ordinary consumer, form a link with WEIGHT WATCHERS and that link was one which would likely cause detriment to or take unfair advantage of the distinctive character or repute of the Claimant’s mark. He gave no opinion on whether the Claimant’s marks were tarnished by virtue of the Defendants’ quality control of its WAIST WATCHERS sandwiches. However, he accepted that the Claimant had no control over the quality or production standards (however good or bad) of the sandwiches and, since the public was likely to link the marks, the Claimant was loosing control of its reputation.

Given his opinion on infringement, the Judge explained that there was also a strong case that the trade mark registrations held by the Defendants were invalid.

The preliminary non-binding opinion given in this case pointed out the perceived weaknesses in the Defendants’ case, presumably providing the parties with a realistic view as to how to deal with the claim.

The Judge’s hands-on approach and comments about such opinions becoming part of the PCC’s armoury demonstrates the PCC’s increasingly pragmatic approach to intellectual property disputes, assisting small and medium enterprises to bring IP claims in more proportionate and cost effective ways.