Common sense approach in shoe fight

17 August 2011

A recent Intellectual property case (Schuh v Shhh [2011] CSOH 123) highlighted a common-sense approach by the Scottish courts to matters of alleged IP infringement. Large footwear chain Schuh had sought to seek an interim interdict against a small, fledging and independent shoe retailer who had named themselves ‘Shhh…’ and were about to launch their business after a successful social media pre-launch campaign. Schuh are a well known high street chain selling a wide range of footwear at a wide price range, whereas Shhh… were aiming their business at a more exclusive end of the market, offering designer footwear that retailed at high prices to a small and discerning customer base in a V.I.P. environment, with its shops being in discreet locations. It is notable that the word ‘Schuh’ is German for ‘Shoe’, whereas, as Mr Steven Moffat, the owner of Shhh…, pointed out, his company name was technically not even a word, stating: ‘ To me, SHHH... is a secret. SCHUH is a shoe.’
The argument was based on provisions of the Trademarks Act 1994: that of similar marks and retails of the same goods would equal a likelihood of confusion, and also that similar marks would cause detriment to their reputation and character without due cause. Whilst there was no dispute over the logo that Shhh were using, Schuh argued that the fledgling company were using a name that was too similar to their own and that customers could be confused by the rival name. They said that customers often mispronounced their brand name as ‘Shhh’ and therefore the name was too close to theirs and likely to damage their brand. They tried to stop Shhh… from continuing to use the name but the court decided that there was, on the face of it, no case to answer and the attempt to interdict Shhh… failed. Those taking on even the smallest of companies in the court will clearly need to show a marked similarity in not just name, but trading conditions too – in this case there was no danger of Shhh… poaching clients from Schuh as the type of customer they were aiming for was so different.
It was also significant that the judge Lord Glennie stated that granting an interdict would have effectively killed off Mr Moffat’s business before it had even really begun which would have been an unjustifiable outcome. Any slight possibility of Schuh making a case was so weak that it would not justify destroying Mr Moffat’s business that he had already had a considerable amount of money invested in its launch, with any stock bought being unfashionable and therefore unsaleable by the time any subsequent court case had been concluded. For many, it will be heartening to see the courts taking into account the effect on trade at a time of economic uncertainty, and whilst it is clearly not the primary concern for the courts, a decision like this can only appear to support small Scottish businesses.

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