The Patents County Court has handed down a preliminary, non-binding decision against Love Bites Limited in an action raised by Weight Watchers (UK) Limited in relation to trade mark infringement.

Weight Watchers is a well-known organisation which aims to help people lose weight. It uses the “Weight Watchers” trade mark to both sell products and services itself and licences its trade mark rights to third parties. Love Bites began using the trade mark “Waist Watchers” in 2006 in order to sell sandwiches. Weight Watchers initially wrote to Love Bites to express their opposition to this but no agreement was reached between the parties. At this stage, Weight Watchers decided the activity of Love Bites was not substantial enough to justify further proceedings, so did not take further action.

However, when Love Bites applied for and obtained registered trade marks for Waist Watchers in August 2010, Weight Watchers considered that further action was necessary. At this time, Love Bites wrote to Weight Watchers to remind them they had been using the mark since 2006 and offered to sell the brand to Weight Watchers. Love Bites stated that, if Weight Watchers did not purchase the brand, it intended to expand its use of the mark and possibly licence it to third parties.

As a result, Weight Watchers raised an action for trade mark infringement against Love Bites. The action was based on the likelihood of confusion between the two trade marks, given the similarity of the marks and products used by the two companies. 

The action proceeded to a Case Management Conference, which is a hearing at an early stage of an action at which a judge will typically set down the timetable for the action and make a first order for directions in the case. The judge, HHJ Birss, asked the parties if they wished him to give a preliminary and non-binding opinion as to the merits of the action. The parties agreed that he should.

Having heard arguments from both parties, the judge decided that there was a strong case that Love Bites had infringed the Weight Watchers mark due to the similarity of the marks, and that the registration of the Waist Watchers mark would probably be invalid. He did express sympathy with Love Bites, who he stated did the proper thing by applying to register the mark they were using. 

The procedure used in this case is probably more significant than the subject-matter itself. It highlights that judges at Case Management Conferences may be proactive in making preliminary rulings, provided the parties agree to this course of action. This may lead to cases being completed at an earlier stage than they otherwise would be, as a non-binding decision may discourage a party from taking a case further if it appears unlikely it will be successful.

It will be interesting to see how frequently this procedure is used in the future, but it illustrates the practical and pragmatic approach that the Patents County Court is prepared to take.