‘Fox and Boot’ ruling
Posted: 21st March 2013
The distinctive 'fox and boot' logo that has adorned the footwear of the rich, powerful and famous for generations sparked an epic High Court struggle between rival shoe retailers. Victory in the passing off action was ultimately achieved by a Jermyn Street maker of bespoke shoes who established an exclusive right to use the device on leather goods within the UK market.
The logo could be found on the shoes of Winston Churchill, Lord Mountbatten and Fred Astair and was linked in the minds of customers to world famous shoemaker, Peal & Co., before the company's sad demise, after almost 200 years trading, in the 1960s. The sign has since been used to distinguish the wares of Jermyn Street-based W.S. Foster & Son Limited.
Foster & Son went to court after it noticed a fox and boot appearing on the shoes of Brooks Brothers UK Limited, a subsidiary of the well-known US menswear group, which was incorporated in 2005 and has opened three shops in the UK as well as trading online with UK customers.
Upholding Foster & Son’s claim, Judge Iain Purvis QC said that there was no doubt that the fox and boot logo was associated by customers with Foster & Son and that the company had valuable goodwill in the sign. He ruled that it was highly likely that those who saw the sign on Brooks Brothers’ goods would believe that they were manufactured by Foster & Son or in some way connected to the company.
Brooks Brothers argued that it had had a close business connection with Peal & Co before its demise and that, in 1964, it had acquired the dying company's goodwill. The fox and boot sign had a ‘common ancestry’ and Brooks Brothers argued that it was fully entitled to use it on its products in the UK market.
The court found that the complex series of transactions by which Peal & Co.'s goodwill in the sign was said to have been transmitted to Brooks Brothers was ‘somewhat murky’. Any right that Brooks Brothers might have had to use the sign in the UK had been ‘abandoned’ in 1964, he ruled. Alternatively, any such right had been lost during the 48-year gap between the collapse of Peal & Co. and 2005, when Brooks Brothers launched fox and boot-branded merchandise in the UK.
The judge concluded: "Foster & Son succeeds in the passing off claim. The use by Brooks Brothers of the fox and boot device on products sold from its stores in the United Kingdom, or through its website to customers in the United Kingdom, amounts to passing off." Nothing in the judge's ruling prevents Brooks Brothers from making use of the fox and boot logo on its products outside the UK market.