[2011] EWHC 1712 (Ch)

[2011] EWHC 1712 (Ch)

Delta's use of Schütz trade marks on cages of cross-bottled IBCs constitutes trade mark infringement in relation to both the bottle and the IBC as a whole, as the average end-user is likely to perceive the marks as indicating the entire IBC is a Schütz product. Disclaimers used by Delta were insufficient to prevent this perception. The conduct also amounts to passing off, as it misleads end-users into attributing the IBC or its components to Schütz, exposing Schütz to risk of reputational damage in the event of product failure.

Parties
Claimant: Schütz (U.K.) Limited; Claimant: Schütz GmbH & Co. KGaA; Defendant: Delta Containers Limited; Defendant: Protechna S.A.
Jurisdiction
England and Wales
Judgment Date
05 July 2011
Procedural Posture
Intellectual Property (trade Mark and Passing Off) / Judgment After Liability Only Trial
Outcome
Judgment for the claimants (Schütz); trade mark infringement and passing off established.
Legal Topics
Trade Mark Infringement, Passing Off, Composite Goods, Exhaustion of Rights, Average Consumer Test, Misrepresentation, Goodwill, Remedies
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Composite Goods Exhaustion of Rights Average Consumer Test Misrepresentation +2 more

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Parties

Schütz (U.K.) Limited

Claimant

Schütz GmbH & Co. KGaA

Claimant

Delta Containers Limited

Defendant

Protechna S.A.

Defendant

Procedural Posture

Intellectual Property (trade Mark and Passing Off) / Judgment After Liability Only Trial

Legal Issues

  1. 1 Whether Delta's use of Schütz trade marks on cages of cross-bottled IBCs constitutes trade mark infringement in relation to the bottle and IBC as a whole
  2. 2 Whether Delta's conduct amounts to passing off by misrepresentation to end-users or fillers
  3. 3 Whether disclaimers used by Delta are sufficient to negate infringement or passing off

Ratio Decidendi

Delta's use of Schütz trade marks on cages of cross-bottled IBCs constitutes trade mark infringement in relation to both the bottle and the IBC as a whole, as the average end-user is likely to perceive the marks as indicating the entire IBC is a Schütz product. Disclaimers used by Delta were insufficient to prevent this perception. The conduct also amounts to passing off, as it misleads end-users into attributing the IBC or its components to Schütz, exposing Schütz to risk of reputational damage in the event of product failure.

Court Disposition

Judgment for the claimants (Schütz); trade mark infringement and passing off established.

Orders

  • Final injunction to issue restraining Delta from further infringement and passing off as and when patent rights no longer bar such activity.
  • Court to hear submissions on the appropriate form of injunction and case management for damages.