It's Fine for some: when wrongs are right

The Court of Appeal for England and Wales is very much in this Kat's sights right now, since he is becoming increasingly puzzled as to its role and how that role is discharged.  The latest case to attract his attention is one which he thinks is the right result -- but nowadays it's not enough to be right; you have to be consistent too.  The case before the Kat right now is Okotoks Ld & another v Fine & Country Ltd & others [2013] EWCA Civ 672, a decision of 14 June. The Court -- Lords Justices Lloyd and Lewison and Lady Justice Gloster -- dismissed the appeal against the decision of the trial judge, Mr Justice Hildyard, which was noted by the IPKat here.

Both parties to this dispute were residential estate agents. The claimant companies, which included both GPEA and two dormant companies owned by it, traded under the name Fine & Country; national and Community trade mark were registered for devices in, respectively, black and gold and monochrome versions, which featured the words FINE & COUNTRY. The claimants' marks were available for licence by local firms of estate agents, who would be permitted to trade under the FINE & COUNTRY name alongside their own names and to market premium properties through the claimants' office in London.

The defendants were part of a group trading under the name "haart", which focused on the lower end of the residential property market. Wishing to establish a premium end business, they first launched a brand called "finehaart", which failed, and later replaced it with FINE -- this word being displayed with gold underlining and often accompanied by the strap line "selling fine homes throughout the country". At trial, Hildyard J found that the defendants' use of these signs was liable to confuse potential customers; that the claimant had a goodwill in the name "FINE & COUNTRY" which was entitled to protection; and that they had established both passing off and trade mark infringement. The defendants appealed.

The appeal was dismissed.

As to the passing off claim, the defendants pointed out that the claimant companies, being dormant, had no business to which goodwill could attach and could not accordingly bring an action in passing off. That criticism was misconceived, however, since GPEA was effectively the franchisor of the Fine & Country brand. Accordingly, any damage to the brand name would affect GPEA's ability to attract licence fees -- an ability which was itself goodwill.

When considering the objection that the claimants were seeking to monopolise a descriptive word, which after all is what "fine" was, the trial judge was right to consider the commercial environment in which the parties were operating: he had made highly relevant findings about the process that led to the design of the eventually adopted sign in its graphic form and it was clear from his decision that he was not prohibiting all use of the simple word "fine".

Regarding the defendants' challenge to the validity of the claimants' trade mark, while there were some errors in Hildyard J's judgment, there was no error of principle sufficient to justify interference with his assessment. The judge was also correct to find that the trade marks had been infringed.

On the subject of the judge's errors this Kat notes that the Court of Appeal, having found some errors in the trial judge's judgment, and that Lewison LJ, giving judgment for the Court, approved  the words of Lord Mance in Datec Electronics Holdings Ltd v United Parcels Service Ltd [2007] UKHL 23, approving a passage from the judgment of Clarke LJ in Assicurazioni Generali SpA v Arab Insurance Group [2002] EWCA Civ 1642:

"...In some cases the trial judge will have reached conclusions of primary fact based almost entirely upon the view which he formed of the oral evidence of the witnesses. In most cases, however, the position is more complex. In many such cases the judge will have reached his conclusions of primary fact as a result partly of the view he formed of the oral evidence and partly from an analysis of the documents. In other such cases, the judge will have made findings of primary fact based entirely or almost entirely on the documents. Some findings of primary fact will be the result of direct evidence, whereas others will depend upon inference from direct evidence of such facts. 

In appeals against conclusions of primary fact the approach of an appellate court will depend upon the weight to be attached to the findings of the judge and that weight will depend upon the extent to which, as the trial judge, the judge has an advantage over the appellate court; the greater that advantage the more reluctant the appellate court should be to interfere [Merpel wonders, what about the weight of the judge ...?]... 

Some conclusions of fact are, however, not conclusions of primary fact of the kind to which I have just referred. They involve an assessment of a number of different factors which have to be weighed against each other. This is sometimes called an evaluation of the facts and is often a matter of degree upon which different judges can legitimately differ. Such cases may be closely analogous to the exercise of a discretion and, in my opinion, appellate courts should approach them in a similar way". 

Some judges are
more appealing
than others

This Kat isn't sure what, if anything, these words mean other than "Where the trial judge has made some mistakes, the appellate court has a remarkably wide degree of discretion as to whether to allow the appeal, dismiss it ,or replace the judge's findings with its own and then reach its own decision". He also notes that Lloyd LJ, who presumably agreed with these words, is the judge who only eight days earlier in Lumos [noted here by the IPKat] gave the majority judgment in a case in which, somewhat controversially, the Court effectively replaced the trial judge's findings with its own -- without citing Datec. Might the wish be expressed that some clearer guidance be given?

Merpel notes that, while trade marks are "easy" concepts with which all judges are familiar, the current European and national law on trade marks is convoluted beyond belief and replete with all sorts of inconsistencies.  With all due respect to Mr Justice Hildyard, who is no doubt an excellent and worthy judge, this was a trade mark case and the specialist Patents Court in England and Wales does have a number of judges who are experienced in trying trade mark cases.  Could we not have deployed one of them rather than putting Hildyard J to a ten-day ordeal by trade marks and then raking over the various bits of his judgment in search of excusable and inexcusable errors?