If you Trespass on a trade mark you won't have a FUNTIME

Trade mark decisions:
Welcome to the World of Funtime!

Hot off the press is a recent trade mark decision from IPEC about children's toys. Prepare for a fun time!

Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner Limited t/a Trespass [2019] EWHC 118.

Background

The Claimant owns:

1. a series of 3 UK word marks: FUNTIME, FUN TIME, and FUN-TIME in respect of “Class 28: Games, toys and playthings; electronic games”.
2. an EU trade mark for the word FUNTIME for the same goods in class 28. The EU registration includes a note that “The trade mark was inherently distinctive, but evidence was submitted to show that, by the date of application, the mark has in fact acquired a distinctive character as a result of the use made of it”. 

The Claimant allege infringement based on various uses on the defendant's products - such as those set out below.

 The issues

There were three main issues:

1. Were the FUNTIME marks sufficiently distinctive to be valid?
2. Were they infringed under section 10(2) Trade Marks Act 1994 i.e. was there a likelihood of confusion?
3. Where they infringed under section 10(3) TMA i.e. did the defendants use take unfair advantage or was it detrimental to the distinctive character of the marks?

Is FUNTIME distinctive? 

There were two questions to be considered: (i) were the FUNTIME marks inherently distinctive? (ii) if not had they acquired distinctiveness through use? 

Spoiler alert: yes on both counts. Read on to find out why. 

The judge identified the average consumer as an adult buying toys for young children. As the judge, Douglas Campbell, noted "the young children may not be paying very much attention to the trade marks, the packaging, or indeed anything at all in their enthusiasm to play with the goods in question."

It was agreed that the average consumer would exhibit a low level of attention.

The FUNTIME advert above was alleged to be an example of the Claimant using the mark descriptively. The judge rejected this analysis:

31. In my judgment both of these examples are telling the average consumer that the trade source of the toys is an entity called FUNTIME, albeit they are doing so in a playful way. The average consumer would not immediately and without further thought perceive the word FUNTIME to mean that using the Claimant’s products could result in an enjoyable time. On the contrary, further thought would be required in order to reach that conclusion. For instance the average consumer would have to ignore the clues (eg the ® symbol and “World of FunTime”) that the mark FUNTIME is used to indicate trade origin. 
    

He concluded that:

35. I accept that the mark has a low degree of inherent distinctiveness, because it does make an indirect allusion to a characteristic of the goods, However many trade marks (especially the successful ones) make some sort of indirect allusion to a characteristic of the goods or services for which they are registered. Section 3(1)(c) of the UK Act only prohibits registration of marks which consist “exclusively” of the specified characteristics and the FUNTIME mark does not consist exclusively thereof. 
    

As inherent distinctiveness was found, the evidence of acquired distinctiveness was reviewed with a little less rigour than it might otherwise have been. Acquired distinctiveness was found - the fact that some of the Claimant's toys were Amazon No. 1 bestsellers and that they were stocked in major retailers such as Morrisons, The Entertainer, Poundstretcher, Poundworld, TK Maxx, and Wilkinsons was important. 

Did Trespass infringe (under section 10(2) TMA)?

The issues were (i) whether the Defendant’s use was “use as a trade mark”; and (ii) whether the presence of the Defendant’s TRESPASS sign prevented any likelihood of confusion (readers may recall that Nike sought to make a similar argument in the LNDR case).

Campbell quickly (and in my view, rightly) concluded that the Defendant’s use would not be regarded by the average consumer as anything other than trade mark use. 

As he noted FUNTIME "is presented to the consumer in much the same way as TRESPASS is presented, ie as being something other than the name of the product (Super Skoosh Water Gun, or Kids Super Kite) and as being an indication as to who supplies it. The average consumer, particularly if paying little attention, would probably regard the Defendant’s logo as a sub-brand or co-brand along with TRESPASS."

The remaining elements quickly fell into place. The signs are undoubtedly "very similar" whether or not the descriptive word TOYS and small stars are considered. The sign was used in relation to identical goods (i.e. toys). As Campbell summarised, "These are powerful factors pointing in favour of infringement, even ignoring any enhanced distinctive character of the FUNTIME mark which has been acquired through use."

The presence of TRESPASS on the packaging did not prevent the likelihood of confusion as "the average consumer would still probably have thought that FUNTIME was owned by the owner of TRESPASS or at least that there was some economic connection between the two."

Infringement of the UK and EU marks was therefore established. 

Did Trespass infringe (under section 10(3) TMA)?

Everyone was in agreement that this claim didn't add a great deal. Campbell was understandably unwilling to address the thorny issue of whether use of an EU mark in one member state is enough to establish a reputation in the EU for the purposes of Article 9(2)(b) so simply considered this issue from the point of view of the UK mark. 

In short:

1. The UK Mark does have the right sort of reputation in the UK 
2. The Defendant’s use gives rise to the requisite "link" in the mind of the average consumer. 
3. The Defendant’s use causes detriment to distinctive character of the Claimant’s UK mark, ie dilution. 
4. This use also takes unfair advantage of the distinctive character or repute thereof (ie constitutes free- riding).
5. The Defendant’s use is without due cause. 

Consequently, the 10(3) bingo card was complete and infringement was also found on this basis.