The makers of MAGIC TREE fir-shaped air fresheners recently saw off a competitor brand of similarly shaped festive fresheners with flashing Christmas lights. In the spirit of the season, Kitchin J. gifted the claimants with a finding that their MAGIC TREE shape marks were valid and infringed in Julius Sämann Ltd. and Others v. Tetrosyl Ltd.  EWHC 529 (Ch). The case offers useful guidance on how the courts assess likelihood of confusion, detriment and due cause, and whether a shape adds substantial value to the goods.
The claimants (“Sämann”) owned U.K. and Community trade mark registrations for two closely similar fir tree shapes in respect of air fresheners (“the Tree Marks”). The Tree Marks were in use in the U.K. since the 1950s in respect of car air fresheners in the form of scented cards and were sold under the brand name MAGIC TREE. The product had consistently been visible through the packaging over the years and often the freshener itself bore no wording other than an indication of the fragrance and an ® symbol to denote that the shape of the card was a registered trade mark.
Sales of MAGIC TREE air fresheners had been very substantial and were growing, with hundreds of thousands sold each month. There was evidence that other companies had sought Sämann’s permission to feature the Tree Marks in advertisements for other products and in films. Although there were many other automotive air fresheners on the market, many of which were in the form of shaped cards, Sämann’s product was the market leader. There was no evidence of any other fir-shaped fresheners on the market in the U.K. at the time the action was brought other than a handful against which Sämann had taken, or was taking, action.
The defendant (“Tetrosyl”) began marketing a car air freshener in the shape of a Christmas tree with snow and flashing lights in the U.K. in autumn 2003. The words “CarPlan Air Care” appeared in a roundel. It was normally displayed for sale at counters and was packaged in boxes which bore a representation of the product.
Sämann sued for trade mark infringement and passing off. Tetrosyl denied both claims and counterclaimed that Sämann’s registrations were invalid due to descriptiveness and because the shape of a fir tree added substantial value to the goods.
Infringement and Likelihood of Confusion
Kitchin J. was persuaded that the Tree Marks were inherently distinctive because the shape did not communicate the nature, nor even necessarily the scent, of the product. It was clear that air fresheners took many different shapes and that there was no single “normal” shape for such goods. Even if he was wrong, however, the judge considered that the Tree Marks had acquired distinctiveness, and indeed an enhanced level of distinctiveness, through more than 50 years of consistent and commercially successful use that emphasized the shape as an indicator of origin.
The Tetrosyl mark was a similar fir shape although it included snow, flashing lights, the shape of a tub at the bottom and the words “CarPlan Air Care” in a roundel. Like Sämann’s product, the Tetrosyl freshener was not expensive and was likely to be an impulse buy, although at £4 it was priced somewhat higher than Sämann’s product, which retailed at between 70 pence and £2. Despite the presence of the tub, wording, snow and lights, however, the judge considered that the Tetrosyl mark was notably similar to the Tree Marks. The shape of a fir tree was, in the judge’s view, the distinctive and dominant component of the Tree Marks, and that had been reproduced wholesale in Tetrosyl’s mark.
Although no witnesses of actual confusion were produced, this fact could be explained by the relatively low cost of the items and the absence of any known faults which might have given rise to returns or complaints. Moreover, Sämann’s lawyers had produced a number of persuasive witnesses as to confusing similarity, identified through a survey (which itself was flawed, and on which Sämann did not rely). The judge was satisfied that the average consumer was likely to assume that the Tetrosyl product was made by the makers of the MAGIC TREE products, and that it was perhaps a seasonal line.
Detriment and Due Cause
Sämann also claimed infringement on the grounds that it enjoyed a reputation in the Tree Marks, and that the use, without due cause, of Tetrosyl’s mark was likely to take unfair advantage of or be detrimental to the distinctive character or repute of the Tree Marks.
The judge was satisfied that Sämann had the reputation claimed. He accepted, moreover, that Tetrosyl’s activities were a real threat to the continued distinctiveness of the Tree Marks, as Tetrosyl’s mark was so similar to the Tree Marks that its presence on the market could undermine the capacity of Sämann’s marks to denote Sämann’s goods exclusively.
Tetrosyl could hardly plead due cause to continue its use in spite of the detriment to Sämann’s marks. The wide variety of freshener shapes on the market proved that there was no commercial need for Tetrosyl to market a freshener in a fir tree shape.
Defence Based on Descriptive Use
Tetrosyl asserted that even if its use infringed, it had a complete defence in that the shape of its freshener was descriptive of a Christmas decoration and was therefore an “indication concerning the kind, quality…or other characteristics of the goods.” To rely on this defence, however, Tetrosyl also had to prove that its use was in accordance with honest practices in industrial or commercial matters.
In this, Tetrosyl also failed. As Tetrosyl’s use wrongly conferred the impression of a commercial link between the Tetrosyl product and the makers of MAGIC TREE fresheners, such use could not be honest.
Attacks on Validity
Tetrosyl’s claim that the Tree Marks were descriptive of a characteristic of the goods when registered was rejected based on the judge’s finding that the marks were inherently distinctive for carded air fresheners.
A further claim that a fir tree shape added substantial value to the goods, and was thus barred from registration as a shape which should remain free for all to use, was also dismissed, but with more elaborate reasoning. In the judge’s view, only a shape which, by comparison with the shapes of equivalent articles, added substantial value (as opposed to merely some value) to the goods could be barred by this provision.
The judge found that the Tree Marks did not confer substantial value on the goods. In this, he was influenced by his view that a fir tree shape was not particularly artistic or aesthetic, and by the fact that Sämann’s goods did not appear to retail at a higher price than other, similar products. “Merely because consumer products are designed to have an attractive appearance,” Kitchin J. ruled, “does not mean that their shape adds substantial value to the goods.”
Although it failed in passing off for lack of evidence that sales of the packaged Tetrosyl product amounted to a misrepresentation, nonetheless Sämann were roundly successful in their claim for trade mark infringement and in the defence of their registrations.
No doubt this decision will boost their continuing efforts to keep the market clear of lookalike products.
It serves, moreover, as a salutary reminder of the importance of policing the marketplace. The distinctive power of an attractive brand is frequently undermined by competitors who seek to produce brands that the public associates with the market leader. It was clear on the facts of this case that Sämann had vigorously opposed the use of similar shapes by others over the years, and this long-term vigilance paid dividends when the validity of its registrations was challenged.
This is of particular importance where shape marks are concerned. Guidance laid down by the ECJ has made trade mark registration of product and packaging shapes increasingly difficult. For those who break through that barrier, the result would be bittersweet if, due to competitor encroachment, the registration became revocable and unenforceable later.