Frost Products Ltd v F C Frost Ltd [2013] EWPCC 34 (26 July 2013)

Frost Products Ltd v F C Frost Ltd [2013] EWPCC 34 (26 July 2013)

The Defendant had established substantial goodwill and reputation in the name 'Frost' in the UK washroom products market prior to the Claimant's application. The Defendant's use of 'Frost' was of more than mere local significance. The Claimant was aware of the Defendant's business and acted in bad faith in applying for the Community Trade Mark. The Claimant's Mark is invalid under article 8(4) and article 52(1)(b) of the CTMR. The Defendant's use of 'Frost' is protected as its own name under article 12(a) CTMR. There was no actionable infringement by the Defendant, and the Defendant's Marks are not invalidated by the Claimant's Mark.

Citation
[2013] EWPCC 34
Parties
Claimant: Frost Products Limited; Defendant: F C Frost Limited
Jurisdiction
England and Wales
Judgment Date
26 July 2013
Procedural Posture
Trade Mark and Passing Off Dispute / Judgment After Trial
Outcome
Claim dismissed; counterclaim succeeds
Legal Topics
Community Trade Mark Regulation, Passing Off, Goodwill and Reputation, Trade Mark Infringement, Bad Faith Registration, Own Name Defence
Intellectual Property Trade Marks Community Trade Mark Regulation Passing Off Goodwill and Reputation Trade Mark Infringement Bad Faith Registration Own Name Defence

Case Brief

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Parties

Frost Products Limited

Claimant

F C Frost Limited

Defendant

Procedural Posture

Trade Mark and Passing Off Dispute / Judgment After Trial

Legal Issues

  1. 1 Whether the registration of the Claimant's Community Trade Mark should be declared invalid under article 8(4) of the CTMR on the ground that the Defendant could have prohibited the use of the name 'Frost' by an action for passing off as at 16 October 2008
  2. 2 Whether the Claimant was acting in bad faith when it filed the application for the Claimant's Mark within the meaning of article 52(1)(b) of the CTMR
  3. 3 If the Claimant's Mark is valid, whether the Defendant can be prevented from using the name 'Frost' as its own name under article 12(a) of the CTMR

Ratio Decidendi

The Defendant had established substantial goodwill and reputation in the name 'Frost' in the UK washroom products market prior to the Claimant's application. The Defendant's use of 'Frost' was of more than mere local significance. The Claimant was aware of the Defendant's business and acted in bad faith in applying for the Community Trade Mark. The Claimant's Mark is invalid under article 8(4) and article 52(1)(b) of the CTMR. The Defendant's use of 'Frost' is protected as its own name under article 12(a) CTMR. There was no actionable infringement by the Defendant, and the Defendant's Marks are not invalidated by the Claimant's Mark.

Court Disposition

Claim dismissed; counterclaim succeeds

Orders

  • The Claimant's Community Trade Mark registration is declared invalid under article 8(4) and article 52(1)(b) of the CTMR.
  • The Claimant's claims for infringement and invalidity of the Defendant's Marks are dismissed.