WS Foster & Sons v Brooks Brothers, Patents County Court
From 1965, Foster had used a fox and boot device on its shoes and boots. Brooks was a UK subsidiary of a well-known US menswear group and was incorporated in the UK in 2005 and started selling shoes with a very similar fox and boot device. The Patents County Court sided with Foster’s claim that Brooks’ use was passing off and rejected Brooks’ defence of honest concurrent use. Honest concurrent use could arise in one of two circumstances: (a) when people independently built up goodwill over years in different localities and then collided due to increased trade; or (b) “common ancestor” cases where the parties had derived their name legitimately from the same source and had traded alongside each other. This was a common ancestor type case.
For a common ancestor defence, the following needs to be established:
(1) The first use of the sign complained of in the UK by the defendant or predecessor was entirely legitimate and not passing off.
(2) By the time of the acts alleged to passing off, the defendant or predecessor must have made sufficient use of the sign to establish protectable goodwill.
(3) The acts alleged to be passing off must not be materially different from the way in which the defendant had carried on business when it was legitimately used.
Applying the above, the Court decided that the original use was legitimate. However, there was not concurrent goodwill in 2005 in the UK because there had been insufficient trade and lack of use in the UK for the 40 years prior to 2005. Even if the second requirement would not have failed, the Court said that it would have failed on the third ground, because the use was on a much greater scale and more likely to cause deception and therefore materially different from before.