Intellectual Property Law - Trade Mark Infringement - What is the Overall Impression?

By Rosanna Cooper

The recent case of Wistbray Ltd v Creative Nature Ltd (2005) emphasises that the Court will look at the overall impression of a sign to determine whether it infringes a trademark.

Section 10 of the Trade Marks Act 1994 provides, so far as is material: '(2) A person infringes a registered trademark if he uses in the course of trade a sign where because.(b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark'.

The claimant company, Wistbray Ltd, was the registered proprietor of a UK registered trademark 'DRAGONFLY' in Class 30 in respect of teas. It was also the registered proprietor of a European Community registered trademark for 'DRAGONFLY', combined with a logo of a dragonfly in silhouette in Class 30 in respect of teas. Wistbray had been using the trademarks for the sale of teas since September 2000 and had an annual turnover of about £1 million.

Creative Nature, a UK company, traded in incense, arts and crafts and herbal teas. Only a very small proportion of its sales were for teas in Class 30. Creative Nature used a sign comprising a pictorial depiction of a dragonfly in flight with the words 'CREATIVE NATURE'.

Wistbray claimed that Creative's use of its sign infringed both its trademarks, suing for infringement under s.10 (2)(b) of the Trademarks Act 1994 and seeking summary judgment.

The court held that: the claimant's use of the marks was widespread and longstanding;

the claimant's marks, both as an expression and as a pictorial symbol for use in teas, was distinctive and memorable;

the fact that the defendant's teas were largely medicinal and were sold at specialised outlets did not remove the likelihood of confusion;

the likelihood of confusion between marks should be appreciated globally, taking into account all relevant factors of the case;

global appreciation should be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components;

it was satisfied in the instant case that the defendant's sign was similar to the claimant's trademarks, the defendant's goods were similar to those of the claimant's, and the result was at least a likelihood of confusion on the part of the public.

The court granted an injunction restraining the defendant's use of the mark.

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