The owners of the Fine & Country estate agency brand have triumphed in a high court fight to block the rival Spicerhaart Group from using the word “fine”.
Malcolm Lindley’s Fine & Country, which licenses its name to estate agencies across the country for the sale of premium properties, won its trademark infringement and passing off claim against Spicerhaart.
Fine & Country, which owns trademarks in respect of the brand name, claimed that Spicerhaart was taking unfair advantage of its reputation and risking confusion of customers through Spicerhaart’s own premium property brand “Fine”, and magazine of the same name.
Today, Hildyard J said: “The claimants seek to stop the defendants using the name and sign ‘Fine’. They claim that the defendants are passing off their businesses as, or as connected with, that of the claimants, and furthermore are in breach of the claimants’ registered trademarks.
“I have concluded that the claimants’ case is well-founded, and that they are entitled to injunctive relief and an inquiry into damages or an account of profits.”
He added: “The claimants have established the triple requirements of a successful claim in passing off, which are goodwill, deception and damage; they are entitled to protect the goodwill generated by them in the course of their business.”
He said that Spicerhaart had failed to establish that, because of the licensing arrangements, the Fine & Country trademarks are deceptive as to trade origin and devoid of any distinctive character and should be declared invalid or revoked.
He ruled that the Fine & Country marks were “sufficiently distinctive” to warrant registration, adding: “It seems to me that the mark has a recognisable and recognised separate existence apart from the descriptive and laudatory nature of the words themselves.”
As well as an injunction and damages – assessment of which will take place at a later date – the judge ruled that Fine & Country is entitled to delivery up or destruction of infringing material.
The Spicerhaart Group, which includes the Haart chain, had argued that Fine & Country was seeking to secure a monopoly on use of an ordinary word in common use by estate agents selling premium properties.
It denied that there was any likelihood of confusion, or that any unfair advantage was being taken.
Spicerhaart introduced the Fine brand for its lifestyle marketing of premium properties in 2009, and published a magazine under the same name to promote them.
Fine & Country Ltd and others v Okotoks Ltd and another Chancery (Hildyard J) 31 July 2012
Michael Hicks (instructed by Wallace LLP) for the claimants
Mark Platts-Mills and Jessie Bowhill (instructed by Manches LLP) for the defendantsR (Rawlinson & Hunter Trustees and others) v Central Criminal Court and anr / Robert Tchenguiz and anr v Director of the Serious Fraud Office and ors Divisional (Sir John Thomas and Silber J) 31 July 2012
