Johnson & Johnson sell a successful range of baby shampoos called No More Tears. They own UK and Irish trade mark registrations for both No More Tears and Johnson’s No More Tears. In April 1999, L’Oreal launched a range of children’s hair products in the UK and Ireland under the name L’Oreal Kids. The product packaging bore the slogan No Tears! No Knots!
In June 1999, after the usual exchange of correspondence, Johnson & Johnson brought proceedings for trade mark infringement in Ireland. At about the same time, L’Oreal’s UK solicitors wrote to Johnson & Johnson referring to the Irish situation and seeking assurances that no trade mark infringement proceedings would be brought in the UK. After the Irish writ had been issued, Johnson & Johnson’s UK solicitors replied to L’Oreal’s solicitors with a letter that referred to the Irish litigation and contained the following passages,
- No decision has yet been made on whether to make a claim of trade mark infringement.
- Others in the UK market who had been using the mark in the recent past have now agreed to respect Johnson & Johnson’s position and are stopping their use.
- Johnson & Johnson are not a company that enters litigation lightly and, in accordance with the spirit of the new Civil Procedure rules, further investigative work and analysis is needed…. before a decision can be sensibly taken as to what to do. Our clients do, after all, have six years in which they could commence proceedings if they were so minded.
- We cannot give L’Oreal comfort at this stage and accordingly we must reserve all of Johnson & Johnson’s rights.
In July 1999, L’Oreal, in response to this letter, brought an action for
- The revocation of Johnson & Johnson’s UK trade mark registrations,
- A declaration of non-infringement, and
- Relief for unjustified threats of trade mark infringement proceedings.
Under Section 21 of the Trade Marks Act 1994, any person who is aggrieved by the issuance of unjustifiable threats by the owner of a UK trade mark registration may bring proceedings for relief against the threats. The relief that can be sought is an injunction against continued threats and damages for any loss sustained because of the threats. The advantage of this Section to an alleged infringer is that it gives him, rather than the trade mark owner, the initiative in the legal action. The trade mark proprietor is forced into defending a possibly unwanted legal action and may also have to do it using new legal advisors, since those who wrote the original "threatening" letter may be named as second defendant in the proceedings and therefore may be unable to act because of a conflict of interest.
In September 1999, Johnson & Johnson successfully applied to have the claims for threats and a declaration of non-infringement struck out. L’Oreal appealed to the High Court. Allowing the appeal and ordering that all three original pleaded claims should be allowed to stand, the Judge (Mr Lightman) ruled as follows,
- The term "threat" covers any intimation that would convey to a reasonable man that some person has trade mark rights and intends to enforce them against another. It matters not that the threat may be veiled or covert, conditional or future. Nor does it matter that the threat is made in response to an enquiry from the party threatened.
- Quoting from an earlier patent case (Brain v. Ingledew Brown Benison & Garrett, 1996 FSR 341), "the conclusion as to whether a document amounts to a threat of patent proceedings is essentially one of fact. …Thus a letter or a statement may on its face seem innocuous, but when placed in context it could be a threat of proceedings".
- The letter (from Johnson & Johnson’s solicitors) is the work of a master of Delphic utterances who uses all his skills to say everything and nothing and to convey an enigmatic message which has the same effect on the recipient as a threat or adverse claim whilst disclaiming to be either. He goes beyond the point of reserving his clients rights…
- The thrust of the letter is a warning of the possibility in the future of proceedings for infringement, perhaps contingent on success in the proceedings in Ireland. The threat may be veiled and muffled by protestations of a continuing state of indecision…but the threat remains sufficient (if not designed) to unsettle the claimants (L’Oreal) and the threat is of trade mark infringement proceedings in respect of sales within the UK.
- Where a person in the position of the defendants (Johnson & Johnson) sets out to write a clever letter designed to be close to the line between what is and what is not a threat or adverse claim, he should not be surprised if the Court holds that it is at least arguable that there is a threat or adverse claim.
When the owner of a UK trade mark registration discovers a potential infringement, he and his legal advisors are faced with various dilemmas. If proceedings are issued without warning, then under the new civil procedure rules (which encourage negotiations and the exchange of information prior to the issuance of proceedings), the plaintiff may face cost penalties from the Court. If, on the other hand, they initially write to the alleged infringer, the letter has to be worded in such careful terms, in view of the provisions of Section 21, that its effect can be essentially neutered. Noone in the UK legal profession appears to be sure at the present time what constitutes a threat under the 1994 Trade Marks Act and what does not. Such uncertainty does not encourage a desire amongst UK trade mark owners or their advisors to provide an alleged infringer with information about their trade mark rights and their genuine concerns about the alleged infringer’s activities.
Given that there are no provisions relating to a threat to sue for passing off based on common law (user) rights, perhaps the best approach remains, if the prior mark is in use in the UK, to threaten the alleged infringer with such a (passing off) action and to make no reference whatsoever to UK registered trade mark rights. Hardly a satisfactory solution, but one that should at least grab the alleged infringer’s attention and avoid an unexpected and unwanted threats action.