Slim pickings in NAH v KBF

Sticking with the food theme of my recent blog posts, NAH, a retailer of sauces and other food items, applied for summary judgment against KBF, a company which markets foods and supplements for fitness enthusiasts.

Claim background

The initial claim relates to the infringement of eight trade marks owned by NAH. The two that are relevant here are the word marks ‘Slim Sauce’, both registered in class 30 which includes food, pasta sauce and zero calorie sauce. The Defendant, KBF, sells a range of low calories sauces under the name ‘Slim Sauces’. NAH alleged infringement under s10(2) of the Trade Mark Act 1994 (TMA 1994). A requirement under this section, is that there is a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. NAH put forward that the sauces both parties sell are identical, and the marks only differ in that one is singular, and one is plural.

In KBF’s Defence, they argued that ‘slim’ lacks distinctiveness in the relevant field, therefore, there could be no likelihood of confusion. In their Counterclaim, KBF alleged that NAH’s trade marks were invalidly registered based on that they consist exclusively of signs which may serve in the trade to designate characteristics of the goods, essentially that they are descriptive. Additionally, KBF counterclaimed that all but one of NAH’s trade marks should be revoked for non-use.

Decision

In determining whether KBF had a real prospect of successfully defending the claim, His Honour Judge Hacon (Judge) assessed the similarity of both ‘Slim Sauce’ and ‘Slim Sauces’ and whether the average consumer would believe KBF’s sauce is connected to NAH. The Judge was of the opinion that ‘sauce’ is descriptive as the products in question are sauce, but ‘slim’ is not descriptive as it may allude to a low-calorie content of the sauce. As such, there is no risk that the average consumer would think both sauces are linked.

In relation to non-use, NAH provided evidence of orders from Holland & Barrett and spreadsheets of their sales figures. KBF did not have a sufficient response to this evidence, meaning it was enough to show genuine use.

With regards to the KBF’s distinctiveness/descriptiveness point under s3(1)(b) and (c) of the TMA 1994, NAH replied that slim in relation to food is aspirational as it invites the consumer to see themselves as slim. They further responded that use of the Slim Sauce trade marks means they have acquired distinctiveness.

The Judge dismissed the NAH’s application for summary judgment, stating that while it was unlikely, but marginally more than fanciful, that KBF would be able to establish that the trade marks had lacked a distinctive character or were descriptive under s3(1)(b) and (c), further evidence was needed to make a conclusion that KBF had no real prospect of succeeding under either head.

Comment

Two absolute grounds for refusal of a trade mark are: that the sign is devoid of any distinctive character and the trade mark is descriptive. On the face of it, Slim Sauce as a word mark appears to be quite descriptive even though NAH suggested slim in relation to food is aspirational. This case highlights the requirement to have a distinct trade mark for your business and ensure that it does not simply describe the good or service that you are offering.

If you are looking to register a trade mark for your business, then please do not hesitate to get in touch with one of our Solicitors here at Briffa.

Written by Saad Khan – Paralegal