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Abercrombie & Fitch Stores Inc v J & J Crombie Ltd
[2002] EWHC 687 (Ch), [2002] All ER (D) 236 (Jan)
Court: Ch D
Judgment Date: 28/01/2002
PLEADING - AMENDMENT - COUNTERCLAIM - CLAIMANTS OWNING UK TRADE MARK REGISTRATIONS FOR MARKS 'ABERCROMBIE' AND 'ABERCROMBIE & FITCH' - DEFENDANT OWNING TRADE MARK REGISTRATION IN RESPECT OF MARK 'CROMBIE' - CLAIMANTS SEEKING DECLARATIONS OF NON-INFRINGEMENT OF DEFENDANT'S TRADE MARK REGISTRATIONS - DEFENDANT COUNTERCLAIMING FOR INFRINGEMENT OF ITS MARKS, PASSING OFF, AND REVOCATION/DECLARATION OF INVALIDITY OF CLAIMANTS' MARKS - DEFENDANT SEEKING TO AMEND PLEADING - WHETHER AMENDMENT SHOULD BE ALLOWED
The claimants, A & F were a clothing retail group with shops in the US, trading principally under the marks 'ABERCROMBIE' and 'ABERCROMBIE & FITCH', and were also the proprietors of UK trade mark registrations for the same marks. They had a catalogue and internet business which extended to the UK and wished to expand into the UK market. The claimants' clothes were aimed at young, fashionable people, and the style of adverts which they used portrayed models with a substantial amount of bare flesh exposed. Some of the claimants' advertising material in the US had been criticised as being excessively based on the sexual attractiveness of the models used, sparking protest from members of the US public, including parent groups. The defendant was an established traditional tailoring and clothes company which operated in the UK, under and by reference to the mark 'CROMBIE'. It was the proprietor of a range of trade mark registrations in respect of its mark, inter alia, for cloth and men's clothing. The parties had been in dispute for some years over whether trade marks including, or consisting of 'ABERCROMBIE' were confusingly similar with 'CROMBIE'. The instant proceedings were begun by the claimants, because the defendant asserted in the various proceedings that the claimants' marks infringed the defendant's registrations, and/or that their use would be passing off. The claimants issued proceedings seeking various declarations of non-infringement of the defendant's trade mark registrations, and revocation/declarations of invalidity of those marks. The defendant counterclaimed for infringement of its marks and passing off and for revocation/declarations of invalidity of the claimants' various marks. The trial date was fixed for 4 March 2002, but prior to the trial, there were certain matters, namely, disclosure, directions as to witnesses, and pleading amendments which needed to be dealt with at a pre-trial review. The pre-trial hearing took place on 28 January. At the hearing, all the necessary matters were agreed between the parties, save a certain pleading amendment. The defendant applied to amend its pleading, to include a claim that the use of the claimants' marks in the UK, would, pursuant to s 10(3) of the Trade Marks 1994, be detrimental to the distinctive character and repute of the defendant's mark, based on the reaction to the claimants' mark in the US.
Held - The application would be dismissed.The nature of the action as a whole was that it was brought in advance of the claimants' entry into the UK market, therefore, the defences in the proposed amendments proceeded on the basis that it was inevitable that the use of the mark by the claimants would lead to complaint. In those circumstances, the defendant's allegation was speculative, as what happened in the US was based on the social climate in the US, and there was no reason to think that the UK public would react in the same way. Furthermore, there was nothing in the pleading to make the necessary connection between any unwelcome association in the US between the claimants' trade mark and the defendant's trade mark. Consequently, the proposed pleading was speculative to a large degree, and given the fact that the trial date was close, and the preparations for trial were at an advanced stage, the defendant would not be allowed to amend its pleading.
