The Intellectual Property Enterprise Court (IPEC) which is the specialist Court which deals with intellectual property claims has recently handed down Judgment relating to trademark infringement and passing off in pet food.
The case involved two competitors in the pet food market. The Claimant, Natural Instinct Limited sued the Defendant, Natures Menu Limited, for trademark infringement and passing off.
The background to the case was as follows:
- Natural Instinct manufactures and sells raw pet food. This pet food was sold frozen in plastic tubs under the brand Natural Instinct.
- Natural Instinct is the registered proprietor of a UK registered trademark for “NATURAL INSTINCT DOG AND CAT FOOD AS NATURE INTENDED”.
- The Claimant had enjoyed some success with its Natural Instinct brand. Having launched 10 years ago, by the end of 2017, the Claimant’s turnover was nearly £10 million per annum and it sold more than 19 million units of its products.
- The Defendant was also a pet food manufacturer and seller, with a range of products sold under various brands, including its house brand, Natures Menu. The Defendant had traded under the Natures Menu brand for approximately 20 years and was a major and long-standing player in the market.
- In September 2017, the Defendant launched a new brand of pet food, including raw food, using the name True Instinct. Sales to consumers of this new brand of food began in January 2018. The Defendant’s packaging initially used both the True Instinct and the Natures Menu but more recently, the Defendant dropped the use of “Natures Menu” on the pack (except in very small font at the base of the pack” and just used “True Instinct” on the packaging.
- The Claimant collated over 35 instances of consumers being confused between the Natural Instinct and True Instinct brands.
- The Claimant also alleged that the Defendant had commissioned and received a report from IPSOS on 25 July 2017 entitled “new opportunities in the raw food market”. That report stated that the Claimant and its Natural Instinct range was the most well-known and most frequently purchased raw pet food. The Claimant alleged that this was the reason why the Defendant created its brand using the name True Instinct.
The Court’s Decision
The Court held that the Defendant, Natures Menu, had infringed Natural Instinct’s trademark and had also engaged in unlawful passing off. This was for the following reasons:
- Natures Menu had received frequent contact from members of the public confusing the Claimant’s products and the Defendant’s products.
- Natural Instinct’s registered trademark had acquired a high level of distinctiveness and reputation in the marketplace.
- There was goodwill attached to Natural Instinct’s name and registered trademark.
- Natures Menu had used both “Natures Menu True Instinct” and “True Instinct” in the course of trade.
- By the time Natures Menu had launched its True Instinct range, Natures Menu’s name was well-known to both members of the public and to members of the trade as a leading specialist supplier of raw dog and cat food.
- Due to the similarity of Natural Instinct’s branding and Natures Menu’s branding and the fact they were both selling similar goods, there was a likelihood that confusion would be caused.
What can we learn from this case?
This is an intellectual property infringement case where Natures Menu was able to provide actual evidence of confusion to members of the public because of the similarities between Natures Menu’s products and branding and True Instinct’s products and branding. This was helpful to the Court in reaching its decision that Natures Menu had infringed True Instinct’s registered trademark and was guilty of passing off. You can read more on trademark infringement and passing off claims here.
The solicitors acting for Natures Menu were also criticised by the Court for not disclosing adverse documents evidencing confusion caused to members of the public. They were also criticised for providing misleading responses in correspondence in answer to express requests from True Instinct’s solicitors to provide examples of confusion.
Our specialist intellectual property disputes team routinely advises on a broad range of disputes relating to trademarks along with other intellectual property disputes relating to copyright, patents, confidential information and data protection. The team is also highly skilled at advising on design rights and reputation management issues and are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally. If you need advice on trademark or other intellectual property infringements, please do not hesitate to contact a member of the team today.