Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)

Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)

Cropton Brewery's use of the Yorkshire Bitter label did not infringe Samuel Smith's trade mark due to differences in the device, clear identification of Cropton Brewery, and lack of evidence of confusion. Use of the Yorkshire Warrior label did infringe the trade mark under Article 5(1)(b) due to greater similarity and likelihood of confusion, but Cropton Brewery had a defence under Article 6(1)(b) for the period up to October 2009 as its use was in accordance with honest practices; after that date, continued use was not in accordance with honest practices. Passing off succeeded only in relation to Yorkshire Warrior. The first letter was an unjustifiable threat but Cropton Brewery was not...

Parties
Claimant: Samuel Smith Old Brewery (Tadcaster); Defendant: Philip Lee (trading as Cropton Brewery)
Jurisdiction
England and Wales
Judgment Date
22 July 2011
Procedural Posture
Civil / Final Judgment
Outcome
Claim partly allowed, counterclaim dismissed
Legal Topics
Trade Mark Infringement, Passing Off, Groundless Threats, Honest Practices, Distinctiveness, Likelihood of Confusion
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Groundless Threats Honest Practices Distinctiveness Likelihood of Confusion

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Parties

Samuel Smith Old Brewery (Tadcaster)

Claimant

Philip Lee (trading as Cropton Brewery)

Defendant

Procedural Posture

Civil / Final Judgment

Legal Issues

  1. 1 Whether Cropton Brewery infringed Samuel Smith's registered trade mark by use of stylised white rose devices on beer labels
  2. 2 Whether Cropton Brewery committed passing off
  3. 3 Whether Cropton Brewery's use was in accordance with honest practices under Article 6(1)(b)

Ratio Decidendi

Cropton Brewery's use of the Yorkshire Bitter label did not infringe Samuel Smith's trade mark due to differences in the device, clear identification of Cropton Brewery, and lack of evidence of confusion. Use of the Yorkshire Warrior label did infringe the trade mark under Article 5(1)(b) due to greater similarity and likelihood of confusion, but Cropton Brewery had a defence under Article 6(1)(b) for the period up to October 2009 as its use was in accordance with honest practices; after that date, continued use was not in accordance with honest practices. Passing off succeeded only in relation to Yorkshire Warrior. The first letter was an unjustifiable threat but Cropton Brewery was not...

Court Disposition

Claim partly allowed, counterclaim dismissed

Orders

  • Declaration that Cropton Brewery infringed the Trade Mark by use of Yorkshire Warrior label after October 2009
  • Declaration that Cropton Brewery did not infringe the Trade Mark by use of Yorkshire Bitter label