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Re:Marks on Copyright and Trademark

BROOKS BROTHERS OUTFOXED

By Rebecca Kay and Charles Harvey

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Background

The famous fox and boot logo was first used by Peal & Co, an English bootmaker. In 1964, Peal & Co sold the goodwill of its business and the use of its trademark to Brooks Brothers UK Limited (a subsidiary of the well-known US menswear group) and in 1965 it ceased trading.  Following the demise of the Peal & Co business, W.S Foster & Son Limited (a shoe retailer on London’s Jermyn Street), recruited an employee of Peal & Co and (apparently at the employee’s suggestion) commenced its own use of the fox and boot logo.  In 2005, Brooks Brothers opened a number of UK stores.  Having realized that some of Brooks Brothers’ shoes featured the fox and boot logo, W.S Foster brought proceedings against Brooks Brothers before the UK High Court.

Claim Of Passing Off

W.S Foster brought its claim under the tort of passing off, an English law concept which allows retailers to preclude competitors from “passing off” goodwill associated with the retailer (such as in a brand) as their own.  W.S Foster argued that the fox and boot logo was easily recognizable and that their customers would associate the logo with their brand.  The High Court agreed, finding that that it was highly likely that those who saw the logo on Brooks Brothers’ goods would assume that either they were manufactured by W.S Foster, or that the logo was connected to the company in some way.  This was notwithstanding the fact W.S Foster traded from Jermyn Street, since their customers in fact came from over 70 countries. Brooks Brothers UK Limited tried to defend itself on the grounds the logo was a part of “common ancestry”, and that fact they had a close business connection with Peal & Co gave them concurrent goodwill.  However, the decision went against Brooks Brothers, with the court finding that Peal & Co had abandoned its business, including its goodwill, when it ceased to trade.  Moreover, Brooks Brothers had, through its inactivity prior to 2005, failed to take steps to preserve that goodwill.  As a result, the use by Brooks Brothers of the fox and boot logo amounted to passing off.  The decision demonstrates that, while often regarded as a tricky cause of action to bring successfully, the English law of passing off is very much alive and kicking, providing an important remedy for owners of unregistered brands.

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