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22 June 2020
The Claimant, Natural Instinct Limited (NI), manufactures and retails raw pet food. The Defendant, Natures Menu Limited (NM), is also a pet food manufacturer and retailer, with a range of products sold under its house brand, NATURES MENU.
In September 2017, NM launched its TRUE INSTINCT brand of pet food. The packaging initially used the sign TRUE INSTINCT with the house brand NATURES MENU and a roundel device. It then dropped the house brand and used TRUE INSTINCT on its own.
The Claimant brought an action in the UK in the IPEC. It filed ample evidence to show its enhanced distinctiveness and reputation in the UK, including independent third-party reports from IPSOS, Dog's Monthly and Crufts. The Defendant admitted, during the course of proceedings, that NATURAL INSTINCT is "one of the strongest raw food brands". This evidence, coupled with NI's revenue figures and website analytics, served to prove that the Earlier Mark (above left) had been extensively used, had acquired a high level of distinctiveness and had a reputation at the relevant date.
This same evidence also proved to Mr David Stone, sitting as Enterprise Judge, that the Claimant had goodwill in the words NATURAL INSTINCT and in the Earlier Mark. The Defendant also admitted this in the course of proceedings.
The Defendant admitted that its Contested Signs (above right) were similar to the Earlier Mark, but only to a low degree.
The Court was not persuaded by its arguments and found that the signs were:
Overall, the judge considered the Contested Signs to be similar to a medium degree to the Earlier Mark.
Given the similarity of the marks, the identity of the goods (pet foods), the enhanced distinctiveness of the Earlier Mark and the average degree of attention of the average consumer, the judge had no problem in finding that there was a likelihood of confusion, and consequently found infringement of the Earlier Mark for the purposes of s10(2).
For a finding of infringement under s10(3), the following elements are required:
All elements of the test were met and NM did not prove that its use of the Contested Signs was with due cause, so the judge held that there was infringement under s10(3).
The Claimant's passing off claim action also succeeded. As discussed above, the judge held that the evidence overwhelmingly proved that NI had goodwill in NATURAL INSTINCT and in the Earlier Mark.
He used the findings of a likelihood of confusion to hold that there would be a misrepresentation to consumers and damage flowing from this misrepresentation.
Much of the judgement is occupied by concerns surrounding evidence and disclosure.
The evidence of one of the Defendant's witnesses – who was described by counsel for the Claimant as a "self-confessed liar" – was not accepted by the Court due to its many inconsistencies. Furthermore, the Defendant was held not to have adequately fulfilled its duty to disclose known adverse documents as part of disclosure.
NI collated and submitted 35 documents purporting to be evidence of actual consumer confusion between the Earlier Mark and the Contested Signs. NM alleged that 35 pieces of evidence was not enough to find a "likelihood" of confusion and that the evidence was not from first-hand sources.
Mr Stone stated decisively that "it is clear … that there is ample evidence of actual consumer confusion by relevant consumers … there is a likelihood of confusion in this case". Importantly, he also noted that the submission of 35 pieces of second-hand evidence was proportionate and entirely consistent with IPEC litigation requirements.
Case reference: Natural Instinct Limited v Natures Menu Limited  EWHC 617 (IPEC)
For further information on this topic please contact Julia King at Taylor Wessing by telephone (+44 20 7300 7000) or email (firstname.lastname@example.org). The Taylor Wessing website can be accessed at www.taylorwessing.com.
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