Trade Mark Infringements On Bulk Containers

In the case of Schutz (UK) Ltd and another v Delta Containers Ltd and another the claimant was a company that manufactured bulk containers (IBCs). Each IBC consisted of a metal cage, into which a plastic bottle capable of holding 1,000 litres of liquid was placed. The bottles wore out faster than the cages. The defendant company would fit a new bottle, not of the claimant's manufacture, to the cages (the altered IBCs). The claimants displayed their name and logo on the cages but less conspicuously on the bottles. The defendants used a disclaimer sticker on each IBC.

The claimant argued two grounds:

1. that when the defendant fitted an IBC made by the claimant with a bottle made by another company, it was infringing the claimant's trade marks in relation to the bottle and the IBC as a whole.
2. that the defendant's conduct was sufficient to constitute passing off of the altered IBCs as the IBCs of the claimant, by giving the impression that the bottle was manufactured or approved by the claimant and that the IBC as a whole was the claimant's product.

The defendant argued that:

1. the appearance of the claimant's trade marks on the IBC constituted no more than the legitimate use of the trade mark in relation to the cage alone, and was neither a use nor a misrepresentation in relation to the bottle or the IBC as a whole.
2. their use of disclaimers was sufficient to avoid the allegation of infringement of the claimant's trade mark.

On the evidence the Court found in the claimant’s favour on both grounds:

1. It stated that the average end user of an IBC would be likely to conclude that the claimant's trade marks on the cage were being used in relation to the bottle as well and hence the entire IBC. Were the IBC to fail, it was likely that they would consider that the claimant was to blame.
2. Passing off was proven, the disclaimers were not sufficient, and possible damage could occur to the claimant because a purchaser would be likely to blame the wrong party for a failure or defect if it were to occur.

Oliver Kew

Published on 19/07/2011