Posted: 15th August 2012
The Court of Appeal has granted protection to the well-known ‘Henley’ brand of watches after ruling that the marketing of confusingly similar ‘Henleys’ time pieces amounted to passing off.
In a decision which laid down the correct evidential tests to be applied in passing off cases, the court ruled that the great similarities between the two brand names and the products themselves were sufficient to overcome the absence of substantial direct evidence of misrepresentation.
The producers of ‘Henleys’ watches also used that brand name to market a well-established clothing line and had previously been licensed to use the ‘Henley’ name by the respondents for the sale of men’s watches.
Following the termination of that licence, the appellants had sought to sell watches under the brand name ‘Henleys’. The respondents launched proceedings and their passing off claim was upheld by the High Court.
Ruling on the case at the Court of Appeal, Lady Justice Arden accepted that the appellants had ‘concurrent goodwill’ in the ‘Henleys’ clothing brand and that there was little direct evidence of operative, non-transitory, misrepresentation.
However the judge, sitting with Lord Justice Pill and Lady Justice Black, observed that that the two words are ‘in truth virtually identical’ and there were ‘very substantial similarities’ between the watches marketed under the rival brands.
Dismissing the appeal, she said that the judge at first instance had been entitled to conclude that a substantial number of people would have been ‘actually deceived’ by those similarities and that the respondents had suffered a significant loss of sales.
Lady Justice Arden concluded: ‘The judge was entitled to reach the conclusion that the appellants had misrepresented their watches produced under the name ‘Henleys’ as those of the respondents.’
No such problems with the famous regatta, as far as we know..