Dickinson Dees helps Fox to corner its quarry

Leading law firm Dickinson Dees has helped its client Fox International Group, to win a flagship trade mark infringement and passing off case in the Patents County Court, central London.

London-based Fox International, one of the world's leading manufacturers and suppliers of angling equipment, sued sole trader Jay Folly of Bedford for infringement and passing off of its registered trade mark for ‘Stalker'.

The court heard that Fox had registered the word Stalker as a trade mark in 1997 and, by 2010, had sold several million pounds worth of goods and had spent well in excess of £100,000 on related promotion.

Fox had become aware that Folly had been selling fishing equipment on the internet under a stylized version of the trade mark "Stalker", replacing the "t" with a picture of an angler holding a fishing rod, which was sometimes accompanied by the word "tackle".

In response to Fox's allegations of registered trade mark infringement and passing off, Folly argued that there was no infringement as he was actually using "Stalker Tackle", while Fox's trade mark was really "Fox Stalker" because Fox sometimes used its house mark in conjunction with its "Stalker" mark. Folly also alleged that "stalker" was a generic term and therefore Fox's registered mark should be considered invalid.

Following the trial, Judge Birss QC ruled in favour of Fox on all issues and dismissed the defendant's counterclaims in their entirety. As a result, the Judge granted Fox an injunction to prevent the use by Folly of the mark "Stalker" (and any other similar marks which incorporated  "Stalker"), as well as an order which included the destruction of all infringing items in his possession, and an order to pay damages and costs.

Will Sander, lead adviser on the case and specialist in IP at Dickinson Dees, commented: "This case illustrates how seriously Fox International takes any infringement of its intellectual property. Whilst a court case really is the last resort, it is important for businesses to assert their trade mark rights to protect their commercial interests. We were delighted with the outcome for our client."

Paul Reeves, Managing Director of Fox International said: "Fox International is no stranger to Intellectual Property disputes. The company owns over 100 patents, trade marks and registered designs and protects its rights vigorously. This matter was somewhat different to any previous cases because the defendant was a litigant in person which presented additional challenges. Will Sander of Dickinson Dees handled the claim with diligence and authority from the start and remained calm in circumstances which would have tested many others' patience."

Mr Reeves added, "Will quickly grasped angling terminology early in the process. This, I believe, enabled him to spot the main grounds of infringement and identify the best strategy for success. Dickinson Dees led the case from start to finish and the good decisions made in the beginning by the firm, meant we were able to succeed in the action without deviating and incurring extra costs."

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