We are looking at ways to stay healthy and fit during these times, where some of us are working from the kitchen table, but what happened when a healthy food company found that part of the wording in its logo (“FIT KITCHEN”) was being used on ready meal products? A recent case considered whether this was trade mark infringement and passing off (a form of unregistered trade mark protection) and even whether the Queen owned the trade mark!

Background

Fit Kitchen Limited (FKL) allowed customers to register and enter their food preferences on its website and have healthy ready meals delivered. It owned a UK trade mark (applied for on 8 August 2016) for “Catering (Food and drink); Food preparation services” for the following mark

Scratch Meals Limited sold ready meals via supermarkets and was using “FIT KITCHEN” as a sign. An example is below:

FKL argued there was trade mark infringement and passing off. Scratch Meals denied this and argued FKL’s trade mark was invalid as it was filed in bad faith (FKL had been dissolved as a company six days before it applied for the trade mark for not filing 2015-2016 accounts).

Validity of the trade mark

In a sense, the most important issue of the case was that FKL filed the trade mark application for FIT KITCHEN at the time it was a dissolved company. Scratch Meals argued that on this basis the trade mark was filed in bad faith. However, on the evidence FKL was able to prove that it was not aware that the company had been dissolved because its director had not seen the notices (they had been sent to the wrong address) and he applied to restore the company as soon as he was aware of the issue. Further, FKL was still doing business during the time it was dissolved.

Having lost this argument, Scratch Meals tried to argue that the trade mark was invalid as a dissolved company cannot apply for a trade mark and the application would be owned by the Crown. However, Scratch Meals had not included this in its claim, so Scratch Meals could not argue the point. In our view, had Scratch Meals included this point in its claim it could well have succeeded.

Trade mark infringement

As the trade mark was valid, was it infringed? Scratch Meals accepted that its “FIT KITCHEN” sign was similar to the trade mark and the services registered (Catering (Food and drink); Food preparation services) were similar to those of Scratch Meals. In considering the final element and whether there was a likelihood of confusion, the judge held there was infringement including because:

  • The dominant component of FKL’s trade mark was the “FIT KITCHEN” wording and Scratch Meals’ sign of “FIT KITCHEN” was identical to this;
  • FKL had 65 examples of people contacting them about Scratch Meals’ products and Scratch Meals had disclosed some documents containing examples of people contacting them but wanting to contact FKL.

FKL also argued its trade mark had a reputation in the UK catering market and Scratch Meals’ use infringed the trade mark by taking unfair advantage of, or being detrimental to, the distinctive character or repute of the trade mark. This argument failed because it did not have sufficient reputation. If FKL had been able to show reputation, Scratch Meals would have been found to have taken unfair advantage because of the evidence from people thinking they were contacting FKL for the ready meals.

Passing off

For passing off, FKL had to prove it had goodwill in its business. There was a misrepresentation by Scratch Meals and this led to damage. FKL succeeded as the judge considered there was a lower threshold for proving goodwill than reputation and FKL’s modest goodwill was enough, the evidence for likelihood of confusion demonstrated there was a misrepresentation and there were no arguments regarding damage if misrepresentation was shown.

Comment

It may be difficult to protect the food products you are selling but cases like this show the importance of a good brand name and the value of protecting it by a trade mark. Scratch Meals did register a trade mark after FKL, but there was still infringement because of FKL’s earlier trade mark. The alternative is to try to rely on passing off but this is usually more difficult and can be more expensive, as instead of being able to rely on a trade mark certificate to prove your rights, you need to prove goodwill, misrepresentation and damage.

This case also highlights the importance of what can happen in situations where the owner of the trade mark is dissolved or ceases to exist, as if this happens the trade mark is owned by the Crown. This may be the case if there is a company re-organisation and the owner name of the trade mark is not changed and the owner is then dissolved. In our view, FKL’s claim could well have failed if Scratch Meals had made the claim that a dissolved company cannot apply for a trade mark.


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