Court Gives Trade Mark Owner Frosty Reception

When a Canadian company decided to make a new attempt to enter the British market in 2008 with its range of washroom products, it registered its trade marks (carrying the name ‘Frost’) under the relevant classes of trade mark.



Another business, F C Frost Ltd., subsequently tried to register various trade marks in the same classes, all of which used the word ‘Frost’ with another word.



The holder of the registered trade marks sought to oppose these registrations and, in turn, F C Frost claimed that it could successfully have opposed the 2008 registrations as it had been using the word ‘frost’ on its washroom products brand for more than a quarter of a century before the trade marks were granted.



The court had to consider whether F C Frost had ‘an established reputation and associated goodwill’ in the name ‘Frost’ in relation to the sale of washroom products. The court concluded that it did.



Secondly, the court had to consider whether the F C Frost name was ‘used in the course of a trade of more than mere local significance’. If it could be established that ‘through use, the sign relied on has acquired a significance which is not restricted from the point of view of the third parties concerned to a small part of the relevant territory’, the registration of the trade marks could be successfully opposed.



The court considered that it had acquired a widespread significance, noting that its products had been used in ‘iconic’ buildings throughout the world.



The court ruled that the original registration of the trade marks in 2008 was carried out in bad faith and was itself invalid.



The case shows that merely being successful in registering a trade mark is not necessarily the end of the matter if another firm can demonstrate prior use of the same or similar marks in the same markets and demonstrate that its use is significant.