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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Chocosuisse Union Des Fabricants Suisses De Chocolat v Cadbury Ltd [1997] EWHC 360 (Pat) (29 October 1997) URL: https://www.bailii.org/ew/cases/EWHC/Patents/1997/360.html Cite as: [1997] EWHC 360 (Pat) |
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CHANCERY DIVISION
B e f o r e :
____________________
(1) CHOCOSUISSE Union Des Fabricants Suisses de Chocolat a cooperative society formed under title XXIX of the Swiss Code Of Obligations (2) KRAFT JACOBS SUCHARD (SCHWEIZ) AG a company incorporated under the laws of Switzerland (3) CHOCOLADEFABRIKEN LINDT & SPRÜNGLI (SCHWEIZ) AG a company incorporated under the laws of Switzerland (suing on behalf of themselves and all other persons who manufacture chocolate in Switzerland and export such chocolate to the United Kingdom) |
Plaintiffs |
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- and - |
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CADBURY LIMITED |
Defendant |
____________________
Mr. Michael Bloch and Mr. Richard Meade instructed by Willoughby & Partners for the Defendant
Hearing dates: 6 - 13 October, 1997
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Crown Copyright ©
Mr. Justice Laddie:
"It is essential for the Plaintiff in a passing off action to show at least the following facts:
(1) That his business consists of, or includes, selling in England a class of goods to which the particular trade name applies;
(2) That the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods;
(3) That because of the reputation of the goods, there is a goodwill attached to the name;
(4) That he, the Plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value;
(5) That he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the Defendant selling goods which are falsely described by the trade name to which the goodwill is attached." (p. 105/41- 106/5)
The Law
"I think that the principle on which both the courts of law and of equity proceed, in granting relief and protection in cases of this sort, is very well understood. A man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practice such a deception, nor to use the means which contribute to that end. He cannot therefore be allowed to use names, marks, letters or other indicia, by which he may induce purchasers to believe, that the goods which he is selling are the manufacture of another person. I own it does not seem to me that a man can acquire property in a name or mark; but whether he has or not a property in the name or mark, I have not doubt that another person has not the right to use that name or mark for the purposes of deception, and in order to attract to himself the course of trade, or that custom, which, without the improper act, would have flowed to the person who first used, or was alone in the habit of using the particular name or mark."
"...nobody has any right to represent his goods as the goods of somebody else." (page 283/28)
"There appears to be considerable diversity of opinion as to the nature of the right, the invasion of which is the subject of what are known as passing-off actions. The more general opinion appears to be that the right is a right of property. This view naturally demands an answer to the question - property in what? Some authorities say property in the mark, name, or get-up improperly used by the defendant. Others say, property in the business or goodwill likely to be injured by the misrepresentation. Lord Herschell in Reddaway v. Banham expressly dissents from the former view; and if the right invaded is a right of property at all, there are, I think, strong reasons for preferring the latter view. ... Further, it is extremely difficult to see how a man can be said to have property in descriptive words, such as "Camel Hair" in the case of Reddaway v. Banham where every trader is entitled to use the words, provided only he uses them in such a way as not to be calculated to deceive. Even in the case of what are sometimes referred to as Common Law Trade Marks the property, if any, of the so-called owner is in its nature transitory, and only exists so long as the mark is distinctive of his goods in the eyes of the public or a class of the public." (p. 284)
"In the Champagne case the descriptive term referred to the geographical provenance of the goods, and the class entitled to the goodwill in the term was accordingly restricted to those supplying on the English market goods produced in the locality indicated by it. Something similar was true in the Sherry case where the word "sherry" as descriptive of a type of wine unless it was accompanied by some qualifying geographical adjective was held to denote wine produced by the solera method in the province of Jerez de la Frontera in Spain and the class entitled to the goodwill in the word was restricted to suppliers on the English market of wine produced in that province. In the Scotch Whisky case the product with which the case was primarily concerned was blended whisky and the class entitled to the goodwill in the descriptive term "Scotch Whisky" was not restricted to traders who dealt in whisky that had been blended in Scotland but extended to suppliers of blended whisky wherever the blending process took place provided that the ingredients of their product consisted exclusively of whiskies that had been distilled in Scotland. But the fact that in each of these first three cases the descriptive name under which goods of a particular type or composition were marketed by the plaintiffs among others happened to have geographical connotations is in my view without significance. If a product of a particular character or composition has been marketed under a descriptive name and under that name has gained a public reputation which distinguishes it from competing products of different composition, I can see no reason in principle or logic why the goodwill in the name of those entitled to make use of it should be protected by the law against deceptive use of the name by competitors, if it denotes a product of which the ingredients come from a particular locality, but should lose that protection if the ingredients of the product, however narrowly identified, are not restricted as to their geographical provenance." (page 96)
"... it is the reputation that that type of product itself has gained in the market by reason of its recognisable and distinctive qualities that has generated the relevant goodwill. So if one can define with reasonable precision the type of product that has acquired the reputation, one can identify the members of the class entitled to share in the goodwill ..." (p. 98)
"... damage to Warnink in the trade and the goodwill of their business both directly in the loss of sales and indirectly in the debasement of the reputation attaching to the name "Advocaat" if it is permitted to be used of alcoholic egg drinks generally and not confined to those that are spirit based." (p. 91/18 - 24 emphasis added).
"... the effect would be to demolish the distinctiveness the word champagne, and that would inevitably damage the goodwill of the champagne houses." (p. 669)
"By parity of reasoning it seems to me no less obvious that erosion of the distinctiveness of the name champagne in this country is a form of damage to the goodwill of the business of the champagne houses."
"thought the [Champagne] case exemplified the principle that a tendency to impair distinctiveness might lead to an inference of damage to goodwill..."
"Like the judge, I do not think the defendants' product would reduce the first plaintiffs' sales in any significant and direct way. But that is not, as it seems to me, the end of the matter. The first plaintiffs' reputation and goodwill in the description Champagne derive not only from the quality of their wine and its glamorous associations, but also from the very singularity and exclusiveness of the description, the absence of any qualifying epithets and imitative descriptions. Any product which is not Champagne but is allowed to describe itself as such must inevitably, in my view, erode the singularity and exclusiveness of the description Champagne and so cause the first plaintiffs damage of an insidious but serious kind. The amount of damage which the defendants' product would cause would of course depend on the size of the defendants' operation. That is not negligible now, and it could become much bigger. But I cannot see, despite the defendants' argument to the contrary, any rational basis upon which, if the defendants' product were allowed to be marketed under its present description, any other fruit cordial diluted with carbonated water could not be similarly marketed so as to incorporate the description champagne. The damage to the first plaintiffs would then be incalculable but severe." (p. 678)
"... this is the reputation which the Champagne houses have built up over the years, and in which they have a property right. It is not in my view unfair to deny the defendants the opportunity to exploit, share or (in the vernacular) cash in on that reputation, which they have done nothing to establish. It would be very unfair to allow them to do so if the consequence was, as I am satisfied it would be, to debase and cheapen that very reputation."
"... denoting a product endowed with recognisable qualities which distinguish it from others of inferior reputation that compete with it in the same market." (p. 95)
The Facts
Is there a class of goods with a protectable goodwill?
"I was reasonably certain in my own mind that `Swiss chocolate' meant chocolate made in Switzerland."
this goes no way to demonstrating any relevant group reputation and it therefore does not assist the plaintiffs.
(i) Members of the public
"Miss Tayler asked me what I took Swiss chocolate to mean ... I assumed I was to identify chocolate made in Switzerland although I did explain that I did not know much about it."
Ms. Petra Wöstefeld - "I said it was very smooth chocolate, smoother than English chocolate and it comes from Switzerland."
Mr. Ben Warner - "To me Swiss chocolate is quality and a tad exclusive. I'd say it comes from Switzerland."
Mrs. L. Tear - "I answered by stating I thought it was creamier chocolate which was more expensive. I assume it is from Switzerland."
Miss O'Connor - "I said I thought it was nicer, smoother and better chocolate. I said I thought it was made in Switzerland."
Mrs. Flinders - "To me Swiss chocolate means quality, good taste and usually it comes in nice packaging. To me Swiss chocolate is a luxury product. It has no real geographical significance. ... To me Swiss chocolate is just a quality product."
Mr. Dalton - "To me it is a higher quality chocolate, higher quality than everyday chocolate. The Swiss element does not mean that the product comes from Switzerland."
Ms Jarvis - "Dawn Osborne, asked me "What do you think of as Swiss chocolate?" I said "Better quality, whether it's true or not, I'm not sure"."
"Because she has good taste, I suppose. I think it is associated like the best of the quality of the chocolate range."
"A. No, I probably buy it as gifts, though.
Q. In preference to English chocolate?
A. Probably, yes.
Q. Why is that?
A. I suppose because of the image of it.
Q. And the image is?
A. Slightly more unusual."
(ii) Trade witnesses
"Each of our Swiss chocolate wrappers bears the description "Swiss chocolate". We make sure that the word "Swiss" is emphasized on the label. This is very important in establishing the point of difference of the products and capitalising on the reputation of Swiss chocolate. Not only do we refer to it as St. Michael's Swiss Milk chocolate we also have a separate brand used on all our Swiss chocolates which shows the word "Swiss" on a mountain background in a oval logo."
"Q. Would I be right in saying this, that over the years you have come to appreciate that members of the public do recognize Swiss chocolate as being something?
A. I think they recognize Swiss brands as being something. I am not sure that they would be able to describe explicitly what Swiss chocolate per se was.
Q. Their reaction is going to be something like, "It is high quality."
A. I think the words used in this stand today and were sometimes creamy. People talk about smooth. People talk about creamy. People use a number of, I would say, fairly bland adjectives to describe chocolate from the continent.
Q. We were talking about Swiss chocolate. Was your answer directed to Swiss chocolate or continental?
A. It was directed to Swiss, but I think in the context of which a number of other continental chocolates would probably be in the same bracket.
Q. So you are accepting that some members of the public, in your experience, have a perception as to a type of quality that they are going to get from a product called Swiss chocolate.
A. Yes, I think that is probably true."
"6. For the purposes of this action the Plaintiffs will rely upon the following factors as identifying Swiss Chocolate:
(a) It is made in Switzerland;
(b) It has at least 25% cocoa solid content for milk and plain chocolate, as is required by Swiss and EC law (Article 333 of the Swiss Food Law Ordinance (Ordonnance sur les denrees alimentaires, ODAl du 1 mars 1995) and Paragraph 1.21. of Annex I of EC Directive 73/241/EEC)
(c) It contains no vegetable fat other than cocoa fat; and
(d) It has a smooth texture due to the fact that there is a high percentage of fat and a small chocolate particle size."
"Neither the particle size nor the ratio of fat to particle size is defined in any regulation. Further there is no universally accepted method of defining particle size. For the purposes of this litigation, reliance is placed upon the 84th percentile Malvern Mastersizer laser diffraction method (including where necessary a correction factor) as described by Alan Sidaway. The Swiss Chocolate Manufacturers (as defined above [in the statement of claim]) combine a fat percentage of over about 30% with a particle size (84th percentile as above) of under about 20 microns in producing the said smooth texture of Swiss chocolate."
Has there been or is there likely to be relevant confusion?
Cadbury 1848 |
Cadbury Swiss Chalet |
Cadbury Dairy Milk |
Cadbury Bournville |
Cadbury Dream Double Fudge |
Cadbury Whole Nut |
Cadbury Old Jamaica |
Cadbury Golden Crisp |
Cadbury Black Forest |
Cadbury Roast Almond |
Cadbury Turkish |
Cadbury Grand Seville |
Cadbury Cappuccino |
Cadbury Fruit and Nut |
(i) Mr. Paul Bird picked Swiss Chalet. In his witness statement he was asked why he thought it was Swiss and answered "it says on the label "Swiss Chalet" so I presumed it was Swiss". Under cross examination he said that he liked and bought Swiss chocolate. He also gave evidence that he had consumed quite a few Cadbury products. He was asked whether he associated Cadbury's with any particular country. He said he did not. His reasons for picking Swiss Chalet were not tested by cross examination.
(ii) Mr. P. Newbey picked Swiss Chalet and in his witness statement he said that when he was asked why he thought the item he had chosen was a Swiss chocolate product he answered "because the name and the design on their showed a Swiss scene with a chalet of some description.". Under cross examination he was asked whether, when buying a bar of chocolate, he paid particular attention to the country from which it came. He said that "in general" he did not but on occasion he did. He also said that he associated Cadbury with this country. He was not cross examined in relation to his reasons for having selected Swiss Chalet.
(iii) Mr. Tony Croker's witness statement included the following:
"The legal representative then asked me why I thought that the item I chose was a Swiss chocolate product. I answered that the bottom row were all Cadbury except for one which I think was German. I had to choose the cheapest and the top row were all expensive boxes of chocolate. One bar in the next row had Swiss written on it and they were all about 84p so I chose it. I thought it was a Swiss chocolate product because it had "Swiss" on it."
"I have not really given it much thought, but I would assume most of them are made in England."
(iv) Mr. Christopher Harrison explained in his witness statement that the reason he chose Swiss Chalet was because it said "Swiss" on the wrapper and had pictures of mountains on it. His cross examination was short. He said that he liked Swiss chocolates and also ate Cadbury chocolates. He also said that price was a factor which he took into account when purchasing. The final part of his cross examination was as follows:
"Q. In the ordinary way, if you went into a shop looking to buy bar of chocolate, you would not have in mind, in particular, would you, where it came from?
A. No."
(v) Mrs. Jane Bates said in her witness statement that she chose the Swiss Chalet product as a Swiss chocolate because it had "Swiss" written on it and for no other reason. Under cross examination she said that she knew of various Swiss chocolates, Toblerone particularly coming to mind, but also that she would not buy Swiss chocolate and did not think about what was Swiss chocolate in any great depth.
(vi) Mr. David Carpenter appeared to be alert to the possible difference between Swiss chocolate and chocolate made by a Swiss company. He had selected Swiss Chalet and when asked why he thought that it was a Swiss chocolate product he said:
"... because it had "Swiss" on it and I was asked to pick a Swiss chocolate product, not a product made by a Swiss company, there was other chocolate there made by Nestle."
(vi) Miss Rosina Kazimierczak said that she picked Swiss Chalet as Swiss chocolate "because it said it on it". However under cross examination she said that she did not purchase Swiss chocolate. She said that had she been intending to buy a new chocolate she would have read what was on the back of the label but she did not do so here.
Product | Number of Respondents who selected |
Cadbury 1848 | 0 |
Cadbury Swiss Chalet | 63 |
Cadbury Dairy Milk | 3 |
Cadbury Bournville | 2 |
Cadbury Dream Double Fudge | 2 |
Cadbury Whole Nut | 1 |
Cadbury Old Jamaica | 1 |
Cadbury Golden Crisp | 1 |
Cadbury Black Forest | 0 |
Cadbury Roast Almond | 0 |
Cadbury Turkish | 0 |
Cadbury Grand Seville | 0 |
Cadbury Cappuccino | 0 |
Cadbury Fruit and Nut | 0 |
(i) Miss Calder (N) did not notice the Swiss Chalet bars but said she did not think it was Swiss chocolate because it was from Cadbury's.
(ii) Mr. R. Dalton (N) put Swiss Chalet in the basket. His witness statement includes the following:
"I picked a Cadburys Swiss Chalet bar during the selection exercise because I thought it was Swiss. I believed the label."
(iii) Ms. C Dunkley (N) said that she thought Swiss chocolate was expensive and a treat and usually came from Switzerland. However she did not put Swiss Chalet in the basket. She said:
"I did not pick the Swiss Chalet Cadburys bar during the exercise in the shop because of where it came from i.e. it is Cadburys. I did not think it was Swiss chocolate. ... I told [the interviewer] that I did not think Swiss Chalet was Swiss for a minute."
(iv) Mrs. Madeleine Flinders (N), from whose witness statement I have already quoted above, did not put the Swiss Chalet product in the basket. She said:
"I was shown a bar of Swiss Chalet which I had not seen during the selection process in the shop. I thought it was a poor imitation of Swiss chocolate and that it was probably made here."
(v) Mr. Shaun Hooper (N) did not put Swiss Chalet in the basket. He said:
[The solicitor] asked what Swiss chocolate meant to me. I said it is supposedly made in Switzerland and it is usually rich, dark chocolate. I was then shown a bar of Cadburys Swiss Chalet. I did not pick this during the selection exercise in the shop but I would have done if I'd seen it."
(vi) Ms. Linda O'Connor (N) from whose witness statement I have already quoted did not put Swiss Chalet in the basket. She said the did not think it was Swiss chocolate because it came from Cadbury.
Damage
Unclean hands
"Then would it be a defence to that action at law that the Plaintiff has made false representations to the public that his article was patented when in fact it was not? If the false representation was in the trade mark itself, although I cannot find that that point has ever been decided or raised in a Court of Common Law, yet I am disposed to think, and indeed I have a pretty clear opinion, that if that question were raised it would be held that the fact of the trade mark itself containing a false representation to the public would be an answer at law to an action brought for a deceptive use of the trade mark by the Defendant. ... It appears to me that it would come within the rule Ex turpi causa non oritur actio; that if the trade mark contains a false representation calculated to deceive the public, a man cannot by using that, which is in itself a fraud, obtain - I do not say an exclusive right - but any right at all. ....But where the trade is, as in this case, a perfectly honest trade, and where the trade mark is, as in this case, a perfectly honest trade mark, I am clearly of opinion that there is no common law principle upon which it is possible to hold that the fact of the Plaintiff having been guilty of some collateral fraud would be an answer to an action. It would be impossible to plead at law as a justification for the Defendants' committing the fraud that the Plaintiff had committed a fraud on someone else."
"Members of the First Plaintiff, including the Second and Third Plaintiffs, have used "Swiss", "Switzerland" and Alpine Illustrations in relation to products not manufactured in Switzerland and the Plaintiffs have permitted others to use the same in relation to products not manufactured in Switzerland."
"Members of the First Plaintiff, including the Second and Third Plaintiffs, and/or their branches, associated companies and licensees (as defined in the Chocosuisse Agreement) have promoted the fact that they are Swiss companies and have promoted the following marks as being Swiss: Suchard, Lindt, Nestlé, Toblerone and Milka ("the Swiss Names").
"By using the Swiss Names in relation to chocolate products, members of the First Plaintiff including the Second and Third Plaintiff have deceived members of the public in the United Kingdom into believing that such products were manufactured in Switzerland and/or have created doubt in the minds of members of the public in the United Kingdom as to whether or not such products were manufactured in Switzerland."
(a) Lindt's activities
"If you actually wanted to avoid confusion, you would use a different brand name, would you not? Why use the same brand name for Swiss chocolate as you use for non-Swiss chocolate?"
(b) Suchard's activities
Locus of Chocosuisse to sue
Postscript:
ANNEXES
ANNEX I
Cadbury's Swiss Chalet Packaging:
ANNEX II
Marks & Spencer Swiss Chocolate:
ANNEX III
Waitrose Swiss White Chocolate:
ANNEX IV
Lindt Excellence Packaging:
(a) Swiss made chocolate.
(b) non-Swiss chocolate
Suchard Milka Chocolate:
Note 1 In a witness statement which was the subject of a Civil Evidence Act Notice. [Back]