Hamlins secures victory for Fine & Country in the Court of Appeal14th June 2013
Luxury brand Fine & Country has secured a comprehensive victory over the Spicerhaart Group concluding the on-going battle in the Court of Appeal over use of the FINE brand. The Court of Appeal has today upheld the decision of the High Court handed down in March 2012 supporting Fine & Country’s claim that Spicerhaart was guilty of trade mark infringement and attempting to pass off its FINE brand as associated with Fine & Country.
In a far reaching order Spicerhaart is now required by the Court to re-brand its FINE business, transfer its fine.co.uk domain name to Fine & Country, remove or destroy all infringing material, publish the judgments on its websites for a period of 6 months and pay Fine & Country’s legal costs and damages. The re-brand of the FINE brand, after the multi million pounds of investment in the brand over 3 years, is a crushing blow for Spicerhaart. Despite Spicerhaart’s status as the largest independent estate agency group in the UK, it’s most recent challenge to the decision has failed causing the business to entirely re-brand. The Court of Appeal considered the continued registration of the Fine & Country trade marks to have “far-reaching consequences” and yet the trade mark registrations and the claims of infringement were upheld.
Fine & Country is an international award winning estate agency and lifestyle brand, having won numerous accolades both nationally and internationally for their luxury estate agent services. In 2009 Spicerhaart created its own similar brand – FINE – targeting the premium end of the market in direct competition with Fine & Country. In March last year, after a protracted ten day court case, the judge held the use of the ‘Fine’ brand to be both trade mark infringement and passing-off.
The original claim in the High Court, being one of the highest profile passing off cases of 2012, reflects the ever increasing importance of brand protection. On-going implications for trade mark law abound raising issues such as the ability to register and protect trade marks for descriptive terms – in this case ‘Fine’ – as well as the ability for trade mark owners to develop and protect goodwill associated with marks via marketing services provided to licensees.
Matthew Pryke, a Partner at Hamlins LLP and trade mark specialist, comments.
“This was a very hard fought win providing a very powerful message to brand owners. Predatory businesses who seek to ride on the coattails of successful brands should beware. This judgment, and the onerous order to re-brand, supports and protects brands being registered as trade marks even if those brands include terms which can be used descriptively. I am so very pleased for everyone connected with the Fine & Country business. ”
Fine & Country is a long standing client of Matthew Pryke. Matthew has represented the company for a number of years and spearheaded the original court action which commenced in 2009.
Malcolm Lindley, Managing Director of Fine & Country said
‘With 275 Fine & Country offices across the globe it is vital to protect our brand and trade mark on behalf of our business and the businesses of our licensees. Matthew Pryke and his expert team at Hamlins have worked tirelessly and smartly to oversee our victory. We are absolutely delighted the Court of Appeal upheld the original 2012 decision’.
Note to editors
Hamlins LLP is a long established and well-renowned commercial law firm based in London’s West End. The firm has expertise in a wide range of sectors including Media, Music, TV, Retail, Travel and Leisure, Property, and provides corporate legal services to major brand names, growing SMEs and entrepreneurs, both nationally and internationally.
Fine & Country
Fine & Country is a global network of licensed real estate offices specialising in the marketing, sale and rental of luxury residential properties. The company has offices in 275 locations around the world including in the UK, Dubai, Egypt, France, Malta, Mauritius, Namibia, Portugal, Qatar, Spain, South Africa and West Africa. Fine & Country won Best Estate Agency Marketing and Best International Estate Agency Marketing in 2009, 2010, 2011 and 2012 at the International Property Awards.