The Court of Appeal yesterday (23 November 2017) confirmed that small businesses that have goodwill in a small locality can prevent the registration of a trade mark nationwide and can also apply to invalidate a brand owner’s trade marks.
In the case of Caspian Pizza [2017] EWCA Civ 1874 the Court of Appeal considered the question of whether two trade marks which had been registered by a pizza business trading in Birmingham called Caspian Pizza should be declared invalid on the basis that a business trading in Worcester had acquired goodwill in the same name in Worcester before the trade marks were registered.
The trade mark owner had sued the Worcester business for passing off and trade mark infringement for use of the name Caspian Pizza. The Worcester business counterclaimed for a declaration of invalidity in respect of the Caspian trade marks. The Court of Appeal held that the Worcester business only had goodwill in Worcester but that this was sufficient to object to the registration of the trade marks on the basis that the trade marks are UK wide and therefore would include Worcester.
This case is likely to be a great concern for brand owners as it gives any business, no matter how small, the power to obtain a declaration of invalidity of another brand’s trade marks as long as they have earlier goodwill in a locality.
It also serves as a salutary reminder to trade mark owners to ensure that their trade marks are in order before issuing proceedings for infringement. In this claim the Claimant had aimed to stop the use of the Caspian name by one restaurant and instead lost both of its trade marks.