“Thorough research of trademarks and creative property can avoid potential legal disputes. Make sure you’ve done your research on your brand and trademark before you publicise it.”

This post examines the Patents County Court decision at a Case Managament Discussion in the recent case of Weight Watchers (UK) Ltd & Ors v Love Bites Ltd & Ors.

The facts in Weight Watchers (UK) Ltd & Ors v Love Bites Ltd & Ors

This is a trademark dispute relating to the brand “Waist Watchers”. The Claimant, Weight Watchers (UK) Limited (“Weight Watchers”) believes that Love Bites Limited’s (“the Defendant”) “Waist Watchers” brand (a brand of sandwiches) infringes upon their “Weight Watchers” trademark. The Claimant therefore issued proceedings for trademark infringement under s.10(2) and 10(3) of the Trade Marks Act 1994.

The law relating to trademark infringement

There are two (broad) grounds for an action for trademark infringement under the Trade Marks Act 1994 – an action under s.10(2) (“likelihood of confusion”) or under s.10(3) (“unfair advantage or detriment”).

Under s.10(2) a brand will infringe upon a registered trademark if the sign is identical and is used in relation to goods or services similar to the company in ownership of the registered trademark, or the sign is similar and is used in relation to goods or services identical with or similar to the company in ownership of the registered trademark. Clearly, if either of the two tests is met then there is a high probability of the offending brand’s mark being confused with the registered trademark.

Under s.10(3) a brand will be unfairly competing with the trademark to the disadvantage or detriment of the trademark if the offending brand’s mark is identical with or similar to the trademark.

There are a number of defences to an action for infringement, including:

• The invalidity of the earlier trademark
• The trademark is honestly used and is of the “offending” person’s own name or address
• The trademark is being honestly used to indicate the nature of the “offending” person’s goods or services
• The use of the trademark is honest in nature (i.e. a supplier of parts for BMW using BMW’s logo)

The Patents County Court’s decision in Weight Watchers (UK) Ltd & Ors v Love Bites Ltd & Ors

It should be noted at this point that the Judge’s remarks on this case were of a preliminary nature and not binding on either party or the Court. However, the Judge concluded on a preliminary basis that the “Waist  Watchers” brand did infringe upon the Claimant’s trademark. Under s.10(2) the brand was similar to the Claimant’s and used in relation to goods which were of a similar nature to the Claimant’s. The Judge also supported the Claimant’s case under s.10(3) TMA 1994.

Our intellectual property lawyers’ thoughts on Weight Watchers (UK) Ltd & Ors v Love Bites Ltd & Ors

This is a relatively straightforward case of trademark infringement (although we should again note that the Judge’s decision was of a preliminary nature). It is a case of (probably) unintentional infringement where a Defendant has unfortunately happened upon a snappy catch-phrase which is of an overly similar nature to the goods or services that the Claimant supplies. It further emphasises a number of points:

• Do your trademark research and searches thoroughly prior to attempting to register your mark
• If there is a potential conflict then undertake a risk assessment and obtain legal advice
• If there is a real risk of conflict then consider changing the nature of the mark that you’re using