High Court Rules that owner of Iconic Heritage brand Tommy Nutter to lose Trademark due to Non-Use

 Tommy Nutter loses his trademark in High Court decision. (British Heritage)

Upholding a ruling from the IPO office this year, the High Court has held that Crombie, owner of the trademark of the 1960’s iconic men’s wear tailor Tommy Nutter, famous for dressing the likes of Mick Jagger, Elton John, John Lennon, and whose work is remembered at the Fashion and Textile Museum in London, has lost its rights to use the trademark due to non-use.

In a stimulating judgement given, Lewis, owner of Crombie on appeal against, Mason owner of Nutter Holdings. Earlier this year had been successful in applying for the mark (Tommy Nutter, held by Crombie) to be revoked for non-use, and to register it in the name of his company, (Nutter holding Limited). 

On appeal to the High Court, Crombie submitted that the Hearing Officer's decision had failed to properly consider the issue of goodwill under the law of passing off, and that NH’s Application to register the mark ought to have been refused under section 5(4)(a) of the 1994 Act on the basis of Crombie's common law rights.

The submissions elevated were concerning the company (Crombie’s) trade in waistcoats and Double breasted suits in relation to the mark Tommy Nutter, and also on basis of evidence raised that both the advertisements for the sale of/partnership for the Crombie brand, and oral use of the mark made in relation to the waistcoats amounted to genuine use.

Taking into account the oral connection made with Tommy Nutter the designer, the judge, Mrs Justice Asplin, rejected evidence put forward by Mr Platts-Mills QC’s acting for Crombie Limited, in relation to oral use of the words “Tommy Nutter” being used when speaking to customers in store to describe Crombie’s historic support for Tommy Nutter, the commercial relationship between them and Crombie’s ownership of the brand and the trademark, in connection with the sale of waistcoats.'

Given the very small number of unmarked waistcoats sold some of which may have been sold by staff who explained that they were “Tommy Nutter” waistcoats and the very limited use of the TOMMY NUTTER mark on a few display hangers for a very small number of items, agreeing with submissions put forward by Aaron Wood, representing Nutter Holdings, the judge found “that the oral use of the historical connection between Crombie and Tommy Nutter and Tommy Nutter designs used by both [2 members of staff] was descriptive rather than an indicator of the origin of the garments and did not amount to genuine use because it did not amount to real commercial exploitation of the mark on the market for the relevant goods,” and as such was 'token use.'

The judge put forward that “even if the initiatives in relation to the brand which were being conducted internally were taken into account…the alleged oral use went to the goods themselves, [and that use was not] consistent with the essential function of a trade mark by way of real commercial exploitation of the mark." Confirming that 'the sale of 41 of the waistcoats over the four years 2007 – 2011 of which at most, 12 were on marked coat hangers was the “slightest imaginable level of use of a mark in relation to goods over a five year period.”'

In relation to Double Breasted suits

In relation to the availability of TOMMY NUTTER marked and Tommy Nutter inspired double breasted suits in the stores from late 2011, in a short address, it was held that despite this, there was no evidence that the double breasted suits branded as TOMMY NUTTER were in the stores before the relevant period in question.

Sale of or partnership for the brand

Lastly, on the grounds of genuine use, the judge addressed Mr Platts-Mills QC’s submissions in relation to the publicity surrounding the sale of or search for a partner for the Tommy Nutter brand, and particularly an interview given by the Brand for publication in The Financial Times. The headline in the Financial Times reading “Crombie to sell swinging suit maker Tommy Nutter” and the article containing reference to the fact that “Crombie feels the time is right to sell the Tommy Nutter brand . .”

Despite the article being read by some consumers, it was held that this was aimed at clothing manufacturers, and “the willingness of Mr Lewis to invest in the development of the brand with a view to exploiting it in the market place [could not] in itself elevate actual commercial exploitation of the mark”…pointing out that “the advertisement of the offer for sale or partnership was not use of the mark in relation to the clothing in order to create or maintain a market for the goods…the use was not by way of real commercial exploitation of the mark on the market for the garments, aimed at maintaining an outlet for the goods or a share in that market. Nor was it consistent with the essential function of a trade mark, which is to guarantee the identity of the goods.” Concluding that the initial hearing officer, was correct in his decision that the trademark should have be revoked.

On the issue of goodwill and passing off

After setting out the legal requirements for the common the law of passing off, Mrs Justice Alspin, succinctly rejected the claim for passing off, stating that in order for this to be summoned:

“it most be shown that there would be a misrepresentation by NH were it to use the mark or branding which would lead or be likely to lead to a substantial part of the relevant public to believe that NH’s Tommy Nutter goods are in fact Crombie’s goods, that in some way they are connected with Crombie or that NH is in some way connected with Crombie. ..As soon as one sets out the requirements in this way, it seems clear…that they are not met in this case. It is difficult to see that the reputation or goodwill is attached to goods in the market, in the minds of the relevant purchasing public. First, the steps taken to seek to develop the brand were all in house and did not impinge on the public at all. Secondly, that was also true of the historic financial association between Crombie and Tommy Nutter himself. Although that historic financial connection was explained to the public…it is accepted neither of them had any Tommy Nutter inspired or marked garments to sell when the explanation was given, nor was it suggested that the connection was explained with reference to Tommy Nutter goods rather Tommy Nutter, the designer. Although this may have created an impression in the minds of some Crombie customers to whom Crombie goods were being offered, that there was a connection between Crombie and Tommy Nutter the designer, it seems to me that that is insufficient basis for a conclusion that the Tommy Nutter brand name is recognised by the public as distinctive specifically of the claimant’s goods.”

A full link to the case can be accessed here

Anyone who takes the slightest interest in heritage menswear will confirm that this is a landmark case for the heritage brand, and highlights… that in order for trademark use to qualify as genuine use, garments have to be correctly and consistently branded. The Goss-IPgirl also wonders what implications this will have for current and future brands that wish to make a connection with the British heritage designer and brand Tommy Nutter? And the position for companies such as Tommy Hilfiger who (had also initially sought to oppose Nutter Holdings registration of the mark Tommy Nutter) recently launched the sartorial prep 2013 Women’s fall collection, on British sartorial tradition, which is said to be “in the spirit of Tommy Nutter, iconic 1960s London tailor.” 

(Tommy Hilfiger - From the 2013  Tommy Nutter inspired collection)