Marketing of Refurbished Cookers Infringed Trade Marks

The High Court recently ruled on a claim by AGA Rangemaster, the manufacturer of AGA cookers, that a company which also supplies range cookers had infringed its trade marks.

The company's cookers were fitted with an electric control system, which could also be fitted to AGA cookers to convert them from running on fossil fuels to running on electricity. AGA Rangemaster objected to the company's sale of retrofitted AGA cookers with the control system. It brought claims of trade mark and copyright infringement.

The company argued that it had a defence to the trade mark infringement claims under Section 12 of the Trade Marks Act 1994, which provides that a trade mark is not infringed where it is used in relation to goods that have previously been put on the market by or with the consent of the mark's proprietor. However, Section 12(2) of the Act makes an exception where there are legitimate reasons for the proprietor to oppose further dealing in the goods.

The Court concluded that neither the refurbishment of AGA cookers nor their conversion to electricity gave rise to a legitimate reason. The Court also rejected the argument that the company's activities posed a risk of serious damage to the reputation of AGA Rangemaster's trade marks. However, the Court found that the way the company marketed and sold the converted cookers – including the use of the phrase 'Buy an eControl AGA' on its website – created the impression that there was a commercial connection between the company's products and AGA Rangemaster. As such, AGA Rangemaster had a legitimate reason to object to those activities. The Court also rejected the company's argument that its use of the word 'AGA' was to explain the purpose of its products as described in Section 11(2) of the Act.

The Court concluded that the company's activities were detrimental to and took unfair advantage of the distinctive character of AGA Rangemaster's trade marks, and that they constituted trade mark infringements.

AGA Rangemaster's claim of copyright infringement, relating to a CAD drawing showing the design of the cookers' control panels, was rejected. The drawing was original and exhibited creative choices, and the design was not entirely dictated by functional considerations. Copyright therefore subsisted in the drawing. The company had copied AGA Rangemaster's control panels and therefore the drawing. However, the drawing was a design document for something that was not an artistic work. Making control panels in accordance with the design was therefore not an infringement of copyright by virtue of Section 51 of the Copyright, Designs and Patents Act 1988.