Fosters Brewing Company Limited v S & NF Limited

Previous actions of an applicant, including those where there has been no final determination on liability, may be taken into account in assessing claims of unfair advantage and bad faith.

Fosters opposes FBC

Fosters Brewing Company (FBC) applied for the following series of trade marks in the UK in respect of beers, lagers and ales:

S & NF Limited (Foster's) opposed the application on the basis of their UK registrations for beer (the F logos) as shown below:

Foster's claimed that unfair advantage was taken by FBC because of the reputation it enjoyed in the F logos in the UK.

Foster's also claimed that FBC had acted in bad faith because:

1. FBC's company name conflicted with its rights in FOSTER'S and was used for the same purposes.
2. FBC had known about Foster's rights since 2012 when Foster's had written to FBC to complain about FBC's company name.
3. FBC had filed a trade mark application for the logo (shown below) around the same time as the F Logos, which FBC had withdrawn following opposition by Foster's.

Foster's filed evidence of its reputation in the F logos which showed that the marks were known to approximately 60% of all adults in the UK, and 70% of UK males aged 18-34.

Assessing unfair advantage

The Hearing Officer held there was no doubt in his mind that the main F logo was well-known and probably familiar to most beer, lager and ale drinkers in the UK.

In acknowledging that there were differences between the trade marks, he referred to the Court of Justice of the European Union's (CJ) decision in Specsavers v Asda. In this case the CJ concluded that if an earlier (Community) trade mark has been registered without colour, its use of colour is relevant if the colour (or combination of colours) has been used so extensively that it has become associated with the earlier mark in the minds of a significant part of the relevant public. In this respect, the colours of the later, potentially infringing, trade mark are therefore significant in determining whether use of the later mark takes unfair advantage of the reputation or distinctive character of the earlier non-colour registered mark.

The Hearing Officer held that Foster's had shown use of the F logos with a red letter 'f', in a white surround on a blue oval background, set within a gold outer oval as shown below:

Further, FBC's trade mark used similar colours to Foster's F logos because the third trade mark in the series had the letters 'f' in a pink or red colour on a blue oval background and the other two trade marks featured the letters 'f' in gold on a blue background. The Hearing Officer believed that these colours would be associated with Foster's.

In conceding that that the colours used by Foster's and FBC were not identical nor used in the same way, the Hearing Officer felt unfair advantage existed because the use of similar colours by FBC enhanced the otherwise low degree of similarity between the trade marks.

Accordingly, the Hearing Officer held that as FBC intended to trade in the same field as Foster's; as there was a degree of similarity between the trade marks, enhanced by the use of similar colours; and as the filing of the earlier (withdrawn) application by FBC indicated it was likely that the company intended to take advantage of Foster's reputation, the current application did take unfair advantage of Foster's rights.

Assessing bad faith

The Hearing Officer referred to FBC's use of lettering similar to that used in Foster's trade marks. The evidence also suggested that FBC knew of Foster's before adopting its company name and trade marks. The Hearing Officer held that FBC's actions were in bad faith because FBC clearly knew about Foster's business at the time the contested trade mark application was filed.

As unfair advantage had already been found, and given the reputation of the F logos, the Hearing Officer believed it was difficult to think of an honest reason why FBC adopted a company name which used the words FOSTER and BREWING for identical goods to those offered by Foster's. Therefore, the actions of FBC fell below the standards of acceptable commercial behaviour and the application must therefore have been made in bad faith.

The importance of past actions and colour

The Hearing Officer almost acknowledged that the trade marks being compared were not similar save for the use of 'similar' colours. If the trade marks had been considered dissimilar, the unfair advantage claim would not have been accepted, regardless of Foster's reputation. If FBC had used colours wholly unconnected with Foster's business, say, purple and black for example, it is possible the trade marks would not have been considered similar, and Foster's unfair advantage claim may not have been upheld.

The Hearing Officer considered the earlier actions of FBC in establishing the question of unfair advantage. The fact that FBC had filed and then withdrawn an earlier trade mark which had been deemed similar to Foster's F logos (even though there had not been any final decision in that case by the Registrar), contributed to unfair advantage being found.

Guidance for trade mark owners

This decision may be a useful precedent if a trade mark owner needs to rely on its use of colour and/or the look and feel of its trade mark in alleging similarity to a later trade mark, even if its trade mark has been registered without a colour claim. Our recommendation however, is that if a particular colour scheme is important to a brand holder, trade mark protection should be obtained for the trade mark in both black and white, as well as the specific colour scheme(s) of interest.

Establishing a claim of bad faith is never an easy task as the burden falls on the party bringing the claim to establish that the actions of the later party are below the standards of acceptable commercial behaviour. In this case, the Hearing Officer found that FBC's actions amounted to bad faith relatively quickly. It is interesting to note that neither FBC's company name, nor the earlier withdrawn trade mark application, had, at the time of this decision, been the subject of a previous adverse decision. Nevertheless, the Hearing Officer used both the existence of the company name, and the withdrawn application (along with the existing reputation of Foster's) as a basis for finding bad faith.

From this decision, we advise that in order to successfully bring a bad faith claim, it will assist trade mark proprietors if they are able to show that the actions of the later party as a whole are below the standards of acceptable commercial behaviour. This can include referring to past actions of that party, even if they have been concluded without decision from an appropriate authority. When considered in conjunction with the matters at issue, they may assist in creating an impression that the later party was acting in bad faith.

Useful link

Fosters Brewing Company Limited v S & NF Limited – full decision: http://dycip.com/ukipofosters