High Court of Ireland Decisions

1. The First named Plaintiffs are manufacturers of footwear, including a range of boots which retail in this jurisdiction at prices in the upper end of the market, and which appear to be made to a high standard. They market these boots under the registered trademark "Dr. Martens", the registered owners of which are the Second and Third named Plaintiffs. The Defendants are the owners of a large chain of retail outlets throughout Ireland which deal, inter alia, in footwear.

2. The Plaintiffs seek an Interlocutory Injunction restraining the Defendants from passing off a range of boots sold by them as and for the boots of the Plaintiffs. The claim is somewhat unusual in that the primary allegation with which I am concerned is not that there was a direct representation that the goods sold by the Defendants were manufactured by the Plaintiffs, nor is there an allegation that they were sold in a packaging which resembled that of the Plaintiffs, but rather that the goods themselves were so distinctive as to be associated in the minds of the public solely with the Plaintiffs. They claim that the boots contain a number of unique, or almost unique features, and that a combination of these features is distinctive of their goods. These features are set out in the grounding Affidavit of Charlotte Perkins, and may be briefly described as follows:-

3. In addition, the heel tag in some cases identifies the boots by the trademark Dr. Martens, and in many, if not all, cases the sole is stamped "Dr. Martens".

4. In August, 1995 the Defendants offered for sale a children's boot bearing identical or very similar characteristics to those claimed by the Plaintiffs as being unique to them. This boot was only sold in black, while the Plaintiffs manufacture a range of colours. The Plaintiffs were aware of this, but do not appear to have taken it seriously. In November 1995 the Defendants introduced a second boot, again similar to that of the Plaintiffs, but the Plaintiffs' evidence is that they were not aware of this. The Defendants have recently started to market a large range of such boots, and it is this activity which has given rise to the present proceedings. These boots are not manufactured by the Defendants, and appear to have come from two totally different and independent sources, namely Dunnicliff Brothers Limited in the United Kingdom and Melania SPA in Italy. They do not bear any reference to or identification of the manufacturers, but bear the label "St. Bernard" which is well known as the brand name of goods of all kinds retailed by the Defendants. It is a policy of the Defendants that it rarely identifies manufacturers, and prefers to sell goods under its own brand name. While the Defendants at times commissions manufacturers to produce a specific line of goods for them alone, that was not so in the present case, and these boots were part of the standard production of the respective manufacturers. The Defendants' boots retail at less than half the price of the Plaintiffs' product, and the Plaintiffs allege that they are of an inferior quality.

5. The Defendants do not seriously contest the allegation that their boots contain the same or many similar features to those of the Plaintiffs, but contend that such features are not unique to the Plaintiffs and are not recognised as such, and further that they are merely features which are currently fashionable and which any manufacturer is free to use. They also point to the fact that the Plaintiffs did not seek to register any of these features as a design under the Industrial and Commercial Property (Protection) Act, 1927, and further that in the United Kingdom the Plaintiffs have sought to register "a three dimensional article of footwear" as a trademark, being the features of this boot, and that this application has been opposed by no less than six opponents who make the case that the shoe is not distinctive. That application has yet to be determined.

6. This latter point is not strictly relevant to determining the question of whether the Plaintiffs have a reputation in this country, but it is indicative of the fact that many other manufacturers claim to be entitled to use designs and features very similar to those of the Plaintiffs. The Defendants have also exhibited a number of shoes made by other manufacturers and a number of brochures of other manufacturers showing very similar boots, to which the Plaintiffs answer that they are challenging some of these manufacturers in other countries. It is quite clear that these proceedings are but part of a world-wide claim by the Plaintiffs to a monopoly in boots of a particular design, or even class of designs. There does not appear as yet to have been any final decision anywhere as to the Plaintiffs' rights.

7. In relation to the particular article sold by the Defendants, the Plaintiffs appear to have been in correspondence since last April with Melania SPA in Italy, but have not taken any proceedings against them. They do not seem to have made any complaint or taken any steps against Dunnicliff Brothers Limited. I find this latter fact very strange in the light of evidence that the boots complained of which are manufactured by Dunnicliff Brothers Limited are on sale in many outlets in the United Kingdom and as the First named Plaintiff is a United Kingdom manufacturer, one would expect this to be known to it.

8. I would emphasise that this is an Interlocutory Application. I am not making any final decision as to the Plaintiffs' rights, I merely have to determine whether they have an arguable case. For the Plaintiffs to succeed in the action, they would have to satisfy the court that this combination of features is not only unique to the Plaintiffs, but is recognised by the public as being so. The Plaintiffs have no right to protect the design features of their footwear unless there is a registered design, or unless the Defendants are passing off their goods as and for those of the Plaintiffs.

9. The most generally accepted recent definition of passing off is that contained in the speech of Lord Diplock in Erven Warnink B.V. -v- J. Townend & Sons (Hull) Limited (1979) A.C. 731, where he said:-

10. In the present case, I have no doubt that the Plaintiffs have an arguable case in relation to the last four of these elements, and I think the only question is whether there has been a misrepresentation. There is evidence that on occasion members of the Defendants' staff, when asked did they stock Doc. Martens, indicated the boots complained of, which is a clear misrepresentation, and there is also evidence that in some stores these boots were sold as "Docs", which certainly is arguably a misrepresentation. However, the Defendants are prepared to give undertakings not to continue these practices, without prejudice to their contention that "Docs" is not misleading. What is left as the Plaintiffs' claim is that the Defendants, by putting on sale boots with these features, are representing to the public that these boots are those of the Plaintiffs.

11. The Plaintiffs must establish a reputation in the public, and in particular must establish that the public would recognise this combination of features as being unique to the Plaintiffs. The Plaintiffs have not put forward any independent evidence to this effect other than a very informal survey carried out by the Plaintiffs' solicitors, which consisted of stopping persons in the street, showing them a pair of boots and asking them "What brand of shoes are these?". The courts have always been sceptical of survey evidence, particularly when it is taken in such an informal way, and certainly this survey is open to much criticism. For example, parts of the survey were carried out on the street after dark, and we are not told whether the persons questioned were given an opportunity to examine the boots in the same way as would be possible in a shop.

12. The same arguments are being made here, namely, that the features claimed by the Plaintiffs are simply current fashions, and these arguments seem to me to carry much force. However, with some hesitation, I think the Plaintiffs have just about done enough to establish an arguable case, bearing in mind that they will have a greater opportunity to call more evidence at the full trial, but their case is certainly not a very strong one.

13. That being so, I have now to consider whether an Interlocutory Injunction should be granted, and for this purpose I have to decide where the balance of convenience lies. I think that in this case, as in many cases of passing off, damages would not be an adequate remedy either for the Plaintiffs should they succeed, nor for the Defendants should the action fail. I must therefore look to other considerations.

14. It is urged by the Plaintiffs that I should grant an Interlocutory Injunction in order to maintain the status quo. The Defendants, on the other hand, argue that they first put these goods on the market over a year ago and therefore the status quo is to allow the Defendants' sales to continue. On balance, these arguments cancel each other out, in that the Defendants have undoubtedly sold two types of these boots for approximately a year, but on the other hand, the Plaintiffs did move quickly when a large range of footwear was put on the market.

15. What influences me more is that this is part of world-wide campaign by the Plaintiffs to establish a monopoly in a certain design of footwear. While the outcome of the action eventually will depend only on the reputation of the Plaintiffs in this jurisdiction, nevertheless I am entitled to take into account the fact that this is a small battlefield in a world war, and that the attack in this battle is against what I might call a secondary target - namely a retailer - while no real attack is mounted against the primary target, namely, the manufacturers.

16. The granting of an Injunction is an equitable remedy, and the concept of balance of convenience is an equitable concept. It seems to me inherently inequitable in this case that the proceedings should be brought against a retailer which, on the evidence before me, bona fide purchased these goods from two manufacturers, which goods were offered to the Defendants as being goods which they were entitled to sell, while no action is taken against the manufactures. If there is ultimately held to have been passing off, the basic misrepresentation would have been that of the manufacturer. While this will not relieve the Defendants from liability should the Plaintiffs succeed, it is certainly a factor to be considered in granting or refusing an equitable remedy. In my view, the damage likely to be suffered by the Plaintiffs, particularly if the case can be given an early hearing, will, in the context of its world-wide sales and world-wide campaign, be minimal. On the other hand, the Defendants will be deprived of the sales of a complete range of a very popular style of footwear, which, again taken in context, would be much more serious for them.

17. I am also entitled to take into account the strength or weakness of the Plaintiffs' case. On the evidence before me, which is all that I can consider, and which I realise may not be the full evidence at the ultimate hearing, the Plaintiffs' case is weak, although arguable.

18. For all these reasons, I would consider that the balance of convenience lies in favour of refusing an Interlocutory Injunction.

19. On the light of this, I have not considered the allegation of trade work infringement, particularly as any such possible infringement would be covered by the undertakings offered.