Introduction

The case of Brealey & Anor v. Nomination De Antonio E Paolo Gensini SNC & Anor ([2020] EWCA Civ 103) addresses critical issues surrounding trademark infringement and passing off within the competitive landscape of the fashion jewelry industry. The dispute arose between Nomination, an established Italian company known for manufacturing and marketing combinable charm bracelets under the NOMINATION trademark, and JSC Jewellery (JSC), a UK-based husband and wife partnership trading as Daisy Charm. The core contention centered on JSC's practice of selling bundled charm links on platforms like eBay, wherein each bundle included one genuine Nomination base link alongside a JSC charm link. Nomination alleged that this bundling infringed upon their registered trademarks and constituted passing off, ultimately seeking to protect their brand integrity and market position.

Summary of the Judgment

The England and Wales Court of Appeal upheld the initial judgment rendered by His Honour Judge Hacon, which found in favor of Nomination. The court determined that JSC had infringed upon Nomination's trademarks in two significant ways: first, by supplying Nomination base links in inferior packaging, thereby justifying Nomination's opposition to further commercialization of these goods despite their initial market presence with nominal consent; second, by advertising the bundled products in a manner that effectively used Nomination's trademark in relation to JSC's own goods, amounting to passing off. The appellate court dismissed JSC's appeal, affirming the lower court's findings and emphasizing the importance of maintaining trademark reputation and preventing consumer confusion in the market.

Analysis

Precedents Cited

The judgment extensively referenced European Union trademark regulations, particularly Regulation 207/2009 and its subsequent amendments, as well as pivotal case law from the Court of Justice of the European Union (CJEU). Key cases included:

• Copad SA v Christian Dior Couture SA (Case C-59/08): Established that damage to a trademark's reputation could justify opposition to further commercialization of previously distributed goods.
• Parfums Christian Dior SA v Evora BV (Case C-337/95): Clarified the requirement that misuse of a trademark must seriously damage its reputation.
• Bayerische Motorenwerke AG v Deenik (Case C-63/97), Anheuser-Busch Inc v Budejovicky Budvar np (Case C-245/02), and C line SARL v C line SA (Case C-17/06): These cases provided foundational tests for determining trademark infringement related to distinguishing goods and likelihood of confusion.

These precedents collectively informed the court's approach to assessing whether JSC's actions constituted infringement and passing off, particularly regarding the use of Nomination's trademarks in bundling and advertising.

Legal Reasoning

The court's legal reasoning hinged on the interpretation of Trademark Regulation provisions, specifically Article 9(1)(a) concerning exclusive rights, and Article 13(2) regarding the exhaustion of trademark rights. The judge evaluated whether JSC's bundling of charm links, which included genuine Nomination base links, in inferior packaging and distinct branding, infringed upon Nomination's trademarks and amounted to passing off.

The core of the reasoning was twofold:

• Trademark Infringement: The court assessed whether JSC's use of the NOMINATION trademark in advertising, in relation to JSC's own goods, was done without consent and whether it likely caused confusion among consumers regarding the origin of the products.
• Passing Off: The court examined whether JSC's actions misrepresented the origin of the goods, leading consumers to believe that the Daisy Charm links were supplied by Nomination, thereby damaging Nomination's brand reputation and goodwill.

The judgment emphasized the necessity of protecting trademark reputation, especially in high-quality luxury segments, and recognized that even indirect associations through bundling could harm brand integrity if consumer confusion is probable.

Impact

This judgment reinforces the robust protection afforded to trademarks under EU regulations and common law doctrines like passing off. It serves as a critical reminder to businesses engaging in bundling or collaborative sales practices to ensure clear delineation of brand identities to avoid infringement. The decision particularly highlights:

• The importance of packaging and presentation in maintaining brand reputation.
• The potential legal risks associated with bundling genuine branded products with those from different brands without explicit consent.
• The judiciary's willingness to uphold trademark integrity against practices that could dilute brand value or confuse consumers.

Future cases in the fashion and luxury goods sectors will likely reference this judgment when dealing with similar issues of trademark use and consumer perceptions in multi-brand or bundled product offerings.

Complex Concepts Simplified

Trademark Infringement: This occurs when a third party uses a sign identical or confusingly similar to a registered trademark without permission, in a way that can cause consumer confusion regarding the source of goods or services.

Passing Off: A common law tort used to enforce unregistered trademark rights. It involves three elements: goodwill in the mark, misrepresentation by the defendant to the public, and resulting damage to the claimant's goodwill.

Article 9(1)(a) of Regulation 207/2009: Grants the trademark owner exclusive rights to prevent others from using identical or similar signs for identical goods or services.

Article 13(2) of Regulation 207/2009: Allows trademark owners to prevent the further commercialization of goods that have been placed on the market without their consent, especially if their condition has been altered, potentially harming the trademark's reputation.

Conclusion

The appellate court's decision in Brealey v. Nomination underscores the judiciary's commitment to safeguarding trademark rights and maintaining the distinctiveness and reputation of established brands. By affirming the lower court's findings, the judgment highlights the legal boundaries companies must navigate when engaging in bundling and multi-brand product offerings. It serves as a significant precedent for future cases, emphasizing that even actions that may seem peripheral to direct competition can infringe upon trademark rights and damage brand reputation. Businesses must exercise due diligence in their marketing and sales strategies to ensure compliance with trademark laws and to uphold the integrity of both their own and others' brands in the marketplace.