Flights of fancy

Author: Emma Pettipher, Registered and European Trade Mark Attorney

In a recent passing-off case in the High Court, the judge decided that the claimant enjoyed a notable reputation and goodwill in its mark PENTATHLON, but that there was no misrepresentation being made by the defendant when selling the same goods under the identical trade mark. The decision rested on the particular facts of the case.

Whilst there were several parties involved, essentially the claimant was the successor to a business called The House of Darts which, from 1987, marketed dart flights under the PENTATHLON trade mark in the UK. From 1987 to mid 2003, these dart flights were supplied by the defendant exclusively to the House of Darts business. There was never any formal agreement between the parties and neither business ever attempted to register the PENTATHLON trade mark.

When the relationship between the claimant and the defendant broke down in 2003, the defendant started supplying dart flights marked with PENTATHLON to other wholesalers.

Pertinent facts in the case were as follows:

1. The dart flights concerned were designed by the claimant's predecessor and rough sketches of the designs were provided to the defendant who made final plans and produced the dart flights in accordance with the instructions provided.

2. Although there was never any written agreement between them, all orders which House of Darts placed for supplies of PENTATHLON flights were always placed with the defendant and all PENTATHLON flights which the defendant manufactured over the years were sold to House of Darts.

3. House of Darts never commissioned any party other than the defendant to supply PENTATHLON-branded flights to it and the defendant never sold any of the PENTATHLON flights to any other party other than House of Darts.

4. On occasions, third parties within the darts business asked the defendant to sell PENTATHLON flights to them, but the defendant always declined and advised such third parties that they would have to contact House of Darts if they wished to purchase supplies of PENTATHLON flights.