Kingspan Group Plc & Anor v Rockwool Ltd

Kingspan Group Plc & Anor v Rockwool Ltd

Rockwool's 2007 road shows and 2007 Video, and threatened distribution of the First Video, infringed Kingspan's registered trade marks by making misleading and denigratory use of the marks in the course of trade, failing to meet the requirements for lawful comparative advertising. The campaign falsely represented that Kingspan's products were unsafe when properly installed, based on inappropriate application of the ISO 9705 test. However, Kingspan's claim for malicious falsehood failed as Rockwool acted in good faith and without malice.

Parties
Claimant: Kingspan Group PLC; Claimant: Kingspan Holdings (IRL) Limited; Defendant/claimant (in Counterclaim): Rockwool Limited
Jurisdiction
England and Wales
Judgment Date
21 February 2011
Procedural Posture
Civil (intellectual Property) / Judgment After Full Trial
Outcome
Claim for trade mark infringement succeeds in part; claim for malicious falsehood fails; declarations to be determined after further argument.
Legal Topics
Trade Mark Infringement, Comparative Advertising, Malicious Falsehood, Misrepresentation, Building Regulations Compliance
Intellectual Property Tort (malicious Falsehood) Regulatory Law Trade Mark Infringement Comparative Advertising Malicious Falsehood Misrepresentation Building Regulations Compliance

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Parties

Kingspan Group PLC

Claimant

Kingspan Holdings (IRL) Limited

Claimant

Rockwool Limited

Defendant/claimant (in Counterclaim)

Procedural Posture

Civil (intellectual Property) / Judgment After Full Trial

Legal Issues

  1. 1 Whether Rockwool's promotional campaign and videos infringed Kingspan's registered trade marks
  2. 2 Whether Rockwool committed malicious falsehood against Kingspan
  3. 3 Whether the ISO 9705 test and its presentation constituted misleading comparative advertising

Ratio Decidendi

Rockwool's 2007 road shows and 2007 Video, and threatened distribution of the First Video, infringed Kingspan's registered trade marks by making misleading and denigratory use of the marks in the course of trade, failing to meet the requirements for lawful comparative advertising. The campaign falsely represented that Kingspan's products were unsafe when properly installed, based on inappropriate application of the ISO 9705 test. However, Kingspan's claim for malicious falsehood failed as Rockwool acted in good faith and without malice.

Court Disposition

Claim for trade mark infringement succeeds in part; claim for malicious falsehood fails; declarations to be determined after further argument.

Orders

  • Declaration of trade mark infringement in respect of the 2007 road shows and 2007 Video; threatened distribution of the First Video would also infringe.
  • Claim for malicious falsehood dismissed.