Inter Lotto (UK) Ltd v Camelot Group Plc [2003] EWHC 1256 (Ch) (06 June 2003)

Inter Lotto (UK) Ltd v Camelot Group Plc [2003] EWHC 1256 (Ch) (06 June 2003)

The existence of a registered trade mark does not per se override or extinguish common law rights in passing off. The relevant date for assessing the claimant's reputation and goodwill in a passing off claim is the date the defendant commenced use of the mark, not the date of trade mark application or registration. Registration does not confer a positive entitlement to use the mark in the face of prior rights, and mere infringement does not amount to such wrongdoing as to bar a passing off claim.

Citation
[2003] EWHC 1256 (Ch)
Parties
Claimant: Inter Lotto (UK) Limited; Defendant: Camelot Group Plc
Jurisdiction
England and Wales
Judgment Date
06 June 2003
Procedural Posture
Civil Intellectual Property / Judgment on Preliminary Issue
Outcome
Preliminary issue answered in the negative; claimant's passing off claim not limited by date of trade mark application.
Legal Topics
Passing Off, Trade Mark Infringement, Goodwill, Trade Mark Registration, Ex Turpi Causa, Priority of Rights
Intellectual Property Commercial Law Passing Off Trade Mark Infringement Goodwill Trade Mark Registration Ex Turpi Causa Priority of Rights

Case Brief

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Parties

Inter Lotto (UK) Limited

Claimant

Camelot Group Plc

Defendant

Procedural Posture

Civil Intellectual Property / Judgment on Preliminary Issue

Legal Issues

  1. 1 Whether the date of trade mark application (17 October 2001) is the relevant date for assessing the claimant's reputation and goodwill in a passing off claim.
  2. 2 Whether registration of a trade mark gives the proprietor an overriding entitlement to use the mark, defeating prior common law rights of passing off.
  3. 3 Whether use of a mark that infringes a registered trade mark is per se incapable of generating protectable goodwill for passing off.

Ratio Decidendi

The existence of a registered trade mark does not per se override or extinguish common law rights in passing off. The relevant date for assessing the claimant's reputation and goodwill in a passing off claim is the date the defendant commenced use of the mark, not the date of trade mark application or registration. Registration does not confer a positive entitlement to use the mark in the face of prior rights, and mere infringement does not amount to such wrongdoing as to bar a passing off claim.

Court Disposition

Preliminary issue answered in the negative; claimant's passing off claim not limited by date of trade mark application.

Orders

  • The relevant date for assessing Inter Lotto's reputation and goodwill is the date Camelot commenced use of the mark, not the date of trade mark application.