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Intellectual property: Civil procedure

Damage: English: Goodwill: Interim injunctions: misrepresentation: statements: Trade names: Passing off: use of ordinary descriptive English words: Differences between marks: Horse: Feed: Medicinal purpose: Differences.

Where the claimant had chosen to mark its products with words that had an accepted descriptive English meaning and the defendant had chosen a composite made-up word to mark its products, the differences between the two marks were significant enough to indicate that the parties’ products were different.

The claimant company (B) applied for an interim injunction restraining the defendant company (D) from using its mark EQUIGOLD on its products. B had manufactured and sold EQUINE GOLD, usually preceded by the name BIOTAL, a product with quasi-medicinal properties to be added to horse feed in small quantities. D had proposed to manufacturer and sell EQUIGOLD, a horse feed product to be consumed in medium sized quantities. B contended that in using the mark EQUIGOLD on its products D would be passing off its products as those of B.

HELD: B had established that the expression EQUINE GOLD, when taken without the word BIOTAL, had acquired goodwill. B had chosen to use words that had an accepted descriptive English meaning whereas D had chosen a composite made-up word. The differences between the two marks were significant enough to indicate the products were different. Having considered the context in which the products were sold and their get-up it was clear the two products were different, Premier Luggage & Bags Ltd v Premier (Co) Ltd [1996] RPC 473 considered. B’s product was added to other feed and was in substance a medicinal product whereas D’s was given to a horse in meal-sized quantities. B’s product was supplied in a small tub whereas D’s was supplied in large green sacks. The difference in nature of the products, their purpose and get-up reinforced the impression that a person interested in either product would be able to distinguish between the medicinal type product, EQUINE GOLD, and the feed type product, EQUIGOLD. The passing off claim was weak and an injunction was not granted.

Application refused.
Biotal v Dodson & Harrell Ltd (2004)
ChD (Mann J) 30.11.2004

“Lawtel”: 8.12.04