Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC

In the first trial in the Patents County Court since the Court's new procedural regime came into force, the avant-garde British fashion designer, Dame Vivienne Westwood O.B.E. brought a series of successful claims for trade mark infringement, passing off and copyright infringement against a Manchester-based fashion designer, for what the Court described as a "systematic exploitation of the Claimant's marks".

Background

Dame Vivienne Westwood O.B.E ("Westwood") is a famous British fashion designer who opened her first shop in London in the 1970s. The shop, first known as, and selling clothing and accessories under the name of, "Let It Rock" has had various notable names since, such as "Too Fast to Live, Too Young to Die", "Sex" and currently "World's End". In addition to her own name, the names of her shop and other slogans feature heavily in her designs whether on the items themselves or as the names of collections such as "Anglomania", "Red Label" or "Gold Label". Similarly, Westwood regularly uses logos, in particular, her famous orb device featuring a Maltese cross encircled by a planetary ring, which is used widely either on her goods, in-store, in concessions or on her website.

The Defendant, a Mr Knight ("Knight") was alleged to have used the same or substantially similar marks, such as "Red Planet Westwood", "Red Label", "Let it Rock" or his own orb device, on his fashion items and accessories sold through his websites. The allegations made were variously of trade mark infringement, passing off and copyright infringement.

Trade Mark Infringement

Four of Westwood's marks were protected by Community or U.K. trade mark registrations and in respect of all but one there was a finding of trade mark infringement by Knight under Article 5(1)(b) of the Trade Marks Directive where identical or similar marks are used in relation to identical or similar goods or services where there is a likelihood of confusion.

Where the signs complained of were not identical to the trade marks, the Court found that the conceptual impact was the same notwithstanding the visual differences. For example, Knight's version of Westwood's orb device had different characteristics, but on the basis that the average consumer normally perceives a mark as a whole and rarely sees the parties' marks side by side, the conceptual impact was the same. On the same types of goods, this was enough to cause a likelihood of confusion and therefore trade mark infringement.

Moreover, the Court added that if it was wrong as to there being a likelihood of confusion, each of Westwood's registered trade marks, namely the marks VIVIENNE WESTWOOD (the words by themselves and in fancy script), the orb device and the slogan "Too Fast to Live, Too Young to Die", there would still be an infringement under Article 5(2) as Knight's activities took an unfair advantage of the distinctive character of those marks because they misappropriated the enormous cachet associated with Westwood's marks. The Court confirmed that the slogan qualified as having the requisite reputation for the purposes of Article 5(2) notwithstanding the extremely small sales under the mark due to its longstanding association with Westwood and her business.

Invalidity of Knight's Registered Trade Marks

For the same reasons as discussed for the purposes of infringement under Article 5(1)(b), Westwood successfully claimed that Knight's registered trade marks for his own orb device together with the words "RED PLANET" and his own orb device in the hands of a satyr and the words "RED PLANET JEANS" were invalid due to Westwood's prior registration of her similar orb device. The Court held that the addition of the words "RED PLANET" were not enough to negate the likelihood of confusion due to the highly distinctive character of Westwood's orb.

Knight also applied to register the mark "RED PLANET WESTWOOD" after proceedings had begun. The Court also held that this mark was invalid due to passing off as the word "planet" could be thought to be as another Westwood line following her Red Label line, particularly given the planetary idea inherent in Westwood's widely used orb device.

Passing Off

For the purposes of passing off, the Court held that through Westwood's varied and often extensive use, Westwood had accrued goodwill worthy of protection in each of the marks forming the basis of her claim. For all but one of the twelve marks, the Court held that Knight's use of the same or similar marks amounted to passing off.

In some instances, such as Knight's use of similar arm and cutlass, satyr, lips and "I love crap" devices, the Court held that because such devices were not used in combination with any other of Westwood's marks, the risk of confusion was considerably reduced. Nonetheless, because the marks were used on items displayed on Knight's website next to other items bearing Westwood's marks, the overall context had to be considered. Someone seeing those marks would see them in the context of a website heavily featuring Westwood's marks and this was sufficient for a finding of passing off.

In addition to conducting an analysis of each specific use by Knight, the Court also considered that, because in several instances Knight was putting together words and images which were derivative of Westwood and associated with Westwood, his overall business conduct amounted to passing off his goods as those of Westwood or her business.

Copyright Infringement

Westwood claimed copyright infringement in respect of her orb device, her name written in fancy script, the slogan "Too Fast to Live, Too Young to Die" and "I love crap" logo. However, because these marks had been applied industrially, they did not benefit from the full term of copyright protection for artistic works thanks to Section 52 of the Copyright Designs and Patents Act 1988. Accordingly, Westwood only succeeded under this head in respect of the more recent slogan and the "I love crap" logo, the relevant term for the orb device having expired and no copying having been found in respect of her name in fancy script.

The New PCC Procedure

In some ways, the main point of interest in this case was procedural, as the first trial was subject to the new Patents County Court procedures introduced on 1 October 2010. The new procedures were introduced to streamline disputes and reduce the costs associated with such disputes.

Author: Cordelia Payne, Solicitor in the Intellectual Property Practice