By Coral Hill, College of Law, London
Trade Marks Act 1994 and passing off
Inter Lotto (UK) Ltd v Camelot Group plc [2003] EWCA Civ 1132
The Court of Appeal has given a clear decision that the law on passing off is not affected by the Trade Marks Act 1994.
The arguments presented by both parties highlight the apparent conflict between some of the Act's provisions and the applicable common law.
Inter Lotto operates lotteries in pubs and in July 2001 chose the name Hotpick which was promoted by its sales staff from August 2001.
By 17 October 2001, some 424 pubs were signed up, although the first game was not operated until November 2001.
Camelot selected the name Hotpicks in August 2001 for its lottery game.
On 17 October 2001, it made an application to register the name as a trade mark.
This was duly advertised and then opposed by Inter Lotto.
Camelot continued its promotion and launched the 'Lotto Hotpicks' game in 2002.
In January 2003, Inter Lotto commenced proceedings against Camelot for trade-mark infringement and passing off.
A tussle between Inter Lotto and Camelot over the name Hotpick(s) led to this hearing on a preliminary point of law.
The dispute concerned the interaction between trade-mark law and passing off.
Under the law applicable to passing off, Inter Lotto had to show that it had established goodwill in relation to the name Hotpick.
The date on which this would be assessed is the date that Camelot started the conduct complained about (see Cadbury Schweppes Property Ltd v The Pub Squash Co Ltd [1981] RPC 429, 494 per Lord Scarman).
So Inter Lotto could rely on the goodwill established by April 2002 - the time that Camelot started marketing its new game.
However, Camelot contended that the relevant date was 17 October 2001, the date on which an application was made to register the trade mark.
In the usual course of events, the proprietor of a registered trade mark has exclusive rights from the date of filing of the application for registration.
It claimed that Inter Lotto therefore needed to show that its goodwill had attached to the name Hotpick prior to 17 October in order to mount a claim.
The court had to consider the effect of the Trade Marks Act 1994, which includes specific references to passing off, on this common law right of action.
The Court of Appeal dismissed Camelot's appeal from the decision of Mr Justice Laddie.
In doing so, the court considered certain sections of the Act.
In particular, section 5(4) states that: 'A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade...
A person thus entitled to prevent the use of a trade mark is referred to in this Act as proprietor of an earlier right in relation to the trade mark.'
The Court of Appeal stated that 'registered trade-mark rights are only superior to passing-off rights that are not established at the date of registration.
Passing-off rights that are established at the date of registration are earlier rights that invalidate the registration.
This is what the 1994 Act provides.' (paragraph 27) Camelot was in agreement with this as it related to 'earlier rights'.
However, the issue at stake concerned rights that had been acquired after the date of the application for registration, although before the relevant date for passing-off proceedings.
One argument was that as the 1994 Act has specific reference to earlier rights it could not be intended that there was any provision for rights acquired after the date of registration.
However, section 2(2) of the Act provides that 'no proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.'
The court held that section 2 (2) confirmed that the law of passing off was preserved despite any possible conflicts that may well arise between the two types of claim.
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