Griggs Group Ltd v Dunnes Stores Ltd
| Jurisdiction | Ireland |
| Judge | McCracken J. |
| Judgment Date | 04 October 1996 |
| Neutral Citation | 1997 WJHC-SC 1138 |
| Docket Number | 7449P/1996 |
| Court | High Court |
| Date | 04 October 1996 |
BETWEEN
AND
1997 WJHC-SC 1138
THE HIGH COURT
Synopsis:
INJUNCTIONS
Passing off - Dr.Martens" boots - interlocutory injunction sought restraining defendants from selling boots of similar design - whether design recognised by public as unique to plaintiff co. - whether misrepresentation by defendant - balance of convenience - Held: Injunction not granted - balance of convenience favoured defendant co. - inequitable to grant injunction against retailer when no action has been taken against manufacturers - (High Court - McCracken J. - 04/10/1996)
|R.Griggs Group Ltd & ors. v. Dunnes Stores Ireland Co.|
Citations:
INDUSTRIAL & COMMERCIAL PROPERTY (PROTECTION) ACT 1927
WARNINK V J TOWNEND & SONS (HULL) LTD 1979 AC 731
ADIDAS SPORTSCHUHFABRIKEN ADI DASSLER KA V CHARLES O'NEILL & CO LTD 1983 ILRM 112
JUDGMENT of McCracken J.delivered on the 4th day of October, 1996
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, infootwear.
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 numberof 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:-
1. The overall configuration.
2. The existence of a black tab at the top of the heel.
3. A line of yellow stitching along the side between the sole and the upper.
4. The edge of the sole is grooved or ridged.
5. There is a two toned sole edge.
6. There is a distinctive sole pattern.
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".
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 presentproceedings. 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.
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 bedetermined.
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 byothermanufacturers and a number of brochures of other manufacturers showing very similar boots, to which the...
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