Fields v Klaus Kobec Ltd & Anor [2006] EWHC 350 (Ch) (02 March 2006)

Fields v Klaus Kobec Ltd & Anor [2006] EWHC 350 (Ch) (02 March 2006)

The court held that Mr Fields' registered trade marks for 'KLAUS KOBEC' were valid and not obtained in bad faith. The main allegations of infringement failed except to the limited extent that, after consent was withdrawn on 25 December 2004, KKL continued to use the mark in its company name and on the klauskobec.com domain name, and on the backplate of certain watches. The 'own name' defence applied to use of the company name and on the backplate of watches, as this was required by football club licence agreements and was in accordance with honest practices. However, continued use of the klauskobec.com domain name after consent was withdrawn was not in accordance with honest practices and...

Citation
[2006] EWHC 350 (Ch)
Parties
Claimant: Antoni Fields; First Defendant: Klaus Kobec Limited; Second Defendant: Michael Cohen
Jurisdiction
England and Wales
Judgment Date
02 March 2006
Procedural Posture
Intellectual Property (trade Mark) Infringement and Counterclaim for Invalidity / High Court Trial Judgment
Outcome
Claim for trade mark infringement succeeds in part; counterclaim for invalidity dismissed.
Legal Topics
Trade Mark Infringement, Trade Mark Validity, Consent and Licensing, Statutory Defences, Passing Off
Intellectual Property Law Trade Mark Infringement Trade Mark Validity Consent and Licensing Statutory Defences Passing Off

Case Brief

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Parties

Antoni Fields

Claimant

Klaus Kobec Limited

First Defendant

Michael Cohen

Second Defendant

Procedural Posture

Intellectual Property (trade Mark) Infringement and Counterclaim for Invalidity / High Court Trial Judgment

Legal Issues

  1. 1 Whether the defendants infringed the claimant's registered trade marks for 'KLAUS KOBEC'
  2. 2 Whether the claimant's trade mark registrations are invalid
  3. 3 Whether statutory defences (earlier right, own name) apply to the alleged infringements

Ratio Decidendi

The court held that Mr Fields' registered trade marks for 'KLAUS KOBEC' were valid and not obtained in bad faith. The main allegations of infringement failed except to the limited extent that, after consent was withdrawn on 25 December 2004, KKL continued to use the mark in its company name and on the klauskobec.com domain name, and on the backplate of certain watches. The 'own name' defence applied to use of the company name and on the backplate of watches, as this was required by football club licence agreements and was in accordance with honest practices. However, continued use of the klauskobec.com domain name after consent was withdrawn was not in accordance with honest practices and...

Court Disposition

Claim for trade mark infringement succeeds in part; counterclaim for invalidity dismissed.

Orders

  • Declaration that Mr Fields' trade marks are valid and not invalid for bad faith.
  • Declaration that KKL's continued use of klauskobec.com after 25 December 2004 infringed Mr Fields' trade mark rights.