British Sugar PLC v James Robertson and Sons

Factual and Procedural Background

The Plaintiff, a well-known company producing a range of sugar and dessert topping products under the mark "Silver Spoon," registered the mark "Treat" for dessert sauces and syrups in 1992. The "Treat" product line includes syrups primarily used as ice-cream toppings, holding approximately 50% of that market sector. The Defendant, a company within a larger corporate group, produces a novel toffee-flavored sweet spread named "Robertson's Toffee Treat," launched in 1995 and sold in jam jars alongside jams and preserves. The Plaintiff brought an action alleging registered trade mark infringement regarding the use of "Treat," while the Defendant counterclaimed for revocation of the registration. The court was tasked with determining whether the Defendant's product fell within the specification of the Plaintiff's registered mark, whether the Defendant's use constituted infringement, and whether the registration was valid.

Legal Issues Presented

1. Does the Defendant's product fall within the specification of goods for which the mark "Treat" is registered?
2. Must the Defendant use the mark as a trade mark to constitute infringement under section 10(1) or (2) of the Trade Marks Act 1994?
3. If so, is there infringement pursuant to section 10(1)?
4. If so, is there infringement pursuant to section 10(2)?
5. Is there a defence available under section 11(2)?
6. Is the registration of the mark "Treat" valid?

Arguments of the Parties

Plaintiff's Arguments

• The Defendant's product qualifies as a "dessert sauce or syrup" within the registration specification because the label suggests use on desserts and the product can be used as a sauce.
• The Defendant’s use of "Treat" infringes the registered mark under section 10 as the mark is used in relation to similar goods, creating a likelihood of confusion.
• The registration of "Treat" is valid, having acquired distinctiveness through extensive use and public recognition.

Defendant's Arguments

• The Defendant’s product is a spread, not a dessert sauce or syrup, and is classified in a different trade class (Class 29 rather than Class 30).
• The Defendant does not use "Treat" as a trade mark but descriptively, thus no infringement under section 10.
• The registration of "Treat" is invalid as the mark is a common laudatory word lacking sufficient distinctiveness.
• A defence under section 11(2) applies because the Defendant's use of "Treat" is honest descriptive use in accordance with honest commercial practices.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Crosfield's Application (1909) 27 RPC 837	Illustrates the policy against allowing traders to monopolize common laudatory words as trademarks.	Used to highlight the longstanding reluctance to register common descriptive words as exclusive trademarks.
Bravado Merchandising Services v Mainstream Publishing [1995] FSR 280	Clarifies the scope of trade mark infringement and the meaning of "use as a trade mark" under section 10.	Discussed regarding whether use must be "as a trade mark" to constitute infringement.
Lord McCluskey, unreported Outer House of the Court of Session (1995)	Held that use must be in a trade mark sense for infringement under section 10.	Considered but ultimately rejected as inconsistent with the Directive and statutory language.
Pickwick v British Railways Board (1938) 55 RPC 125	On the requirement of distinctiveness for a trade mark to be registrable.	Used to explain that common laudatory words require strong evidence of distinctiveness to be registrable.
Jellinek (1946) 63 RPC 59	On the test for similarity of goods and the "penumbra" concept in trademark protection.	Applied to establish factors relevant to assessing similarity of goods under section 10(2).
Mars v Cadbury [1987] RPC 387	On the interpretation of descriptive use and comparative advertising in trade mark law.	Referenced in the context of honest use and defences under section 11(2).
Pepper v Hart [1993] AC 593	On the use of parliamentary materials for statutory interpretation.	Rejected as irrelevant for interpreting provisions implementing an EU Directive.
Benelux Court of Justice 1975 NJ 472	On damage to a trade mark's repute by use on dissimilar goods.	Noted as a possible basis for infringement outside section 10(2) but not directly applied.
Saville Perfumery v Woolworth (1939) 43 RPC 147	On the absolute nature of statutory protection once infringement is established.	Confirmed that added matter or circumstances are irrelevant to the question of infringement under section 10.
Other cases including Claeryn/Klarein, Wagamama, Daiquiri Rum TM	On similarity of goods and interpretation of trade mark specifications.	Used to develop the court’s approach to similarity of goods and classification issues.

Court's Reasoning and Analysis

The court began by examining whether the Defendant's product fell within the specification of the Plaintiff's registered mark for "dessert sauces and syrups" in Class 30. Despite the label's suggestion that the spread could be used on desserts, the court found that as a practical matter and in trade, the product was regarded as a spread, not a dessert sauce or syrup. The classification system and trade practice supported this conclusion, and the Defendant's product was more appropriately placed in Class 29 alongside jams and preserves.

The court then addressed whether use of the mark "Treat" by the Defendant must be "as a trade mark" to constitute infringement. It rejected the argument that section 10 requires use as a trade mark, emphasizing the statutory language and the underlying EU Directive. The court noted that the infringement provisions do not include such a gloss, and reliance on parliamentary materials was rejected as irrelevant to interpreting provisions implementing an EU Directive.

On infringement under section 10(1), the court found the issue moot given the product classification but briefly noted that if the Defendant's use was within the specification, infringement could be considered. Regarding section 10(2)(a), which covers identical marks on similar goods, the court carefully distinguished the questions of similarity and likelihood of confusion. It held that the Defendant's product and the Plaintiff's product were not similar goods based on factors such as use, users, physical nature, trade channels, supermarket placement, and market sector classification. Consequently, there was no infringement under section 10(2).

The court considered the defence under section 11(2), which protects honest descriptive use and other uses not affecting the trade mark's function as an indication of origin. It emphasized that section 11(2) must be construed in light of the Directive’s purpose to guarantee origin indication. The court found that the Defendant's use of "Treat" was descriptive and not as a trade mark, supported by the label design, context, and lack of public perception of "Treat" as a trade mark in this context. Thus, the defence under section 11(2) applied.

Finally, the court examined the validity of the "Treat" registration under sections 3 and 47 of the Trade Marks Act 1994. It acknowledged that "Treat" is a common laudatory word, which is prima facie non-distinctive and descriptive. The court found the evidence of distinctiveness insufficient, noting that although some public recognition existed, it was not near universal or near-universal acceptance as a trade mark. The market survey evidence was critiqued for methodological weaknesses and the use of the mark on labels was ambiguous, often accompanied by the well-known "Silver Spoon" mark. The court concluded that the mark had not acquired the necessary distinctive character and declared the registration invalid under section 47(1).

Holding and Implications

The court declared the registration of the trade mark "Treat" invalid pursuant to section 47(1) of the Trade Marks Act 1994.

The court held that the Defendant's product was not within the specification of the Plaintiff's registered mark and that even if it were, no infringement arose due to the lack of similarity of goods and the Defendant's descriptive use of the word "Treat." The defence under section 11(2) further protected the Defendant's use. The invalidation of the registration prevents the Plaintiff from monopolizing a common laudatory word without sufficient distinctiveness.

This decision directly affects the parties by removing the Plaintiff's exclusive rights in the mark "Treat" for the specified goods and permits the Defendant's continued use. The court did not establish new precedent beyond the application of existing principles and EU Directive interpretation but clarified the limits of protection for descriptive marks and the scope of infringement under the 1994 Act.