[Guest post] Retromark Volume XI: the last six months in trade marks

Darren Meale of Simmons & Simmons presents the eleventh volume in his rundown of notable trade mark cases over the past six months.

A bumper crop of candidates presented themselves for inclusion in this volume, these are the 10 that made the cut.

1. No time to rebrand as 21 week delay to injunction refused

Combe International LLC v Dr August Wolff GmbH [2022] EWHC 125 (Ch) (January 2022)

We covered the hoo-ha between VAGISIL and VAGISAN in the last volume. The parties were back in court in January for a form of order hearing. Given that finding and clearing a new brand purely from a legal perspective can take months, it is interesting to note that when a Defendant loses an infringement case it will almost certainly be ordered to rebrand within days, weeks at the most. Here, the Defendant asked for 21 weeks but only secured a short delay pending the outcome of its application to the Court of Appeal for permission to appeal.

Is this practice harsh on a Defendant? On one hand, they’ve just been found to be naughty infringers and why should they be able continue their bad deeds? On the other, until the point of judgment they had every prospect of winning (this was a case which could have gone either way) – so it would be understandable if they weren’t geared up for instant rebrand. The judge was very much in the former camp. But would a more forgiving approach be fairer? In most trade mark cases waiting a little longer to see the Defendant off the market would not, in my view, cause the Claimant a huge additional loss. On the flip side, we all know the hassle involved in finding a new brand and that’s before you get to the logistics of making it happen. Then there’s the likely destruction of perfectly good stock, the potential for inconvenience to consumers who use the injuncted product, and so on. Hard cheese, decided the judge.

2. Sir Stelios Haji-Ioannou of easyGroup “a deeply unimpressive witness”, no easy day in court this time Sir Stelios!

easyGroup Ltd v Nuclei Ltd [2022] EWHC 901 (Ch) (April 2022)

Serial trade mark litigant easyGroup, the vehicle for Sir Stelios to seek to monopolise the word “easy” for travel and just about everything else, received some comeuppance before Mrs Justice Bacon. easyGroup had fought the Defendants over the right to use the name EASYOFFICE for no less than 20 years.

The High Court revoked four EASYOFFICE registrations owned by easyGroup for non-use and held that the Defendant’s use of EASYOFFICE was not an infringement of those registrations anyway owing to, amongst other things, the availability of an honest concurrent use defence.

For those who have ever acted for one of the victims of easyGroup, some solace might be taken in reading the judge’s assessment of Sir Stelios at paragraph 13:

When cross-examined Sir Stelios was revealed to be a deeply unimpressive witness. He was argumentative, giving answers that were defensive to the point of implausibility, and repeatedly contradicted points set out in one or other of his witness statements. It was clear that he had a poor recollection of the events that formed the background to these proceedings. It also became evident that his most recent witness statement contained substantial material that (contrary to the requirements of Practice Direction 57AC) was not within Sir Stelios’ personal knowledge and recollection, but was instead drafted by his lawyers, giving evidence of points on which Sir Stelios had no clear recollection whatsoever. In those circumstances I unfortunately have to conclude that I can place very little weight on his evidence save where it is corroborated by other evidence in the case, including contemporaneous documents.

3. Matchmakers Match.com monopolise “match” to force Muslim-focused Muzmatch to unmatch

Match Group, LLC V Muzmatch Ltd [2022] EWHC 941 (April 2022)

“Match” is an obviously descriptive word in the context of online dating, but it is also the name of one of the largest dating sites, match.com. The Defendant, Muzmatch, was launched in 2011 and, you guessed it, offers online dating for Muslims.

Match Group owned UK and EUTMs for MATCH.COM (the earliest filed in 1996) and a figurative MATCH mark, but no word mark for MATCH. It deployed those to sue Muzmatch for infringement on account of the inclusion of “match” in its name. As might be expected, Muzmatch resisted the claims, arguing it used the term descriptively.

It lost. Despite there being no word mark for MATCH and the only shared element of the marks on each side being the word match, a descriptive word for online dating (or matchmaking), the judge concluded that there was a likelihood of confusion. He was persuaded by (amongst other factors) that the MATCH.COM mark had acquired “a very substantial degree of distinctiveness and reputation as a brand” (Match adduced convincing evidence of its investment in its brand – millions spent in advertising and promotion, and hundreds of thousands of UK customers as a result) along with evidence of consumers referring to the claimant’s business simply as “Match”.

The judge reviewed the case law on conflicts between marks sharing a descriptive element, including Whyte and Mackay v Origin [2015] EWHC 1271 (Ch), but was not discouraged from his finding. He also found 10(3) infringement on the basis of unfair advantage (but not dilution) and passing off.

The Claimant has done well to win this case. The only way I see this decision working is to say that Match became so well known that it overcome the inherent weakness in its mark and acquired a monopoly in a word fundamentally descriptive of the activity of online dating. That is not quite how the judgment is put, but the result is the same. A mark which started life as highly descriptive has – one way or another – overcome it in such a manner that it has become entitled to stop a competitor using a descriptive term.

It is all the more notable that this claim commenced in 2020, nine years after Muzmatch was launched. This was no bar to the claim (and neither was the lack of convincing evidence of actual confusion over that period – only three instances were alleged, and the judge gave them little weight). Those who think that securing a registration without encountering an opposition means you’re safe should think again!

Muzmatch has since rebranded as Muzz.

4. Amazon.com DOES target the UK when it makes it as “painless” as possible for UK consumers to buy from it

Lifestyle Equities v Amazon UK Services Ltd [2022] EWCA Civ 552 (May 2022)

The first instance decision in this case appeared in Volume IX. The High Court held that the US Amazon, amazon.com, did not target UK consumers (and did not therefore infringe the Claimant’s UK trade marks) despite making it as “painless” as possible for them to buy from it.

The Court of Appeal, led by Lord Justice Arnold, disagreed and overturned the trial judge. There were two issues: (1) did Amazon.com target the UK; (2) were actual sales made into the UK uses of the Claimant’s trade marks in the UK.

On (1), Arnold LJ considered the “Review your order” page a UK consumer buying from the US Amazon is presented with once an item has been added to their cart. This page knows the purchaser is in the UK, with a shipping and billing address in the UK, payment in GBP with Amazon making all the necessary arrangements for the goods to be delivered to the UK customer. He held that it was “manifest” that this page was an offer for sale targeted at the UK and said he did “not understand how it can seriously be argued” otherwise. He indicated that it might be right that amazon.com was primarily directed at US consumers or directed to them as a whole, but that did not affect whether it was targeting the UK in the specific instances of infringement in this case. He went on to find that earlier pages in the sales process, including the full product details page, also targeted the UK, not least because that page stated “This item ships to the United Kingdom”. The search results page also targeted (although was “more marginal”) on account of the appearance of the text “Ships to United Kingdom”.

On (2), the actual sales were also infringements and this was the case whether or not there had been targeting of the UK prior to that sale. Arnold LJ adopted a different interpretation of Case C-98/13 Blomqvist v Rolex SA than the trial judge in reaching this conclusion.

Permission for Amazon to appeal to the UK Supreme Court was refused by Arnold LJ in a subsequent judgment on form of order.

Targeting is a tricky doctrine. It doesn’t always make sense to apply territorial rules in a global online environment. But on balance the Court of Appeal has this one right on the facts.

5. “Severe frustration” a common problem for litigants, but not moral prejudice

Wirex Ltd v Cryptocarbon Global Ltd [2022] EWHC 1161 (IPEC) (May 2022)

In a short 31 paragraph IPEC judgment, HHJ Hacon assessed the Claimant’s entitlement to damages having previously found the Defendants liable for trade mark infringement. By this stage the Defendant was a litigant in person and it is fair to say he was not the most reasonable litigant, leading to the judge making a number of adverse costs orders against him, followed by an unless order requiring that those costs orders be paid or the Defendants’ defences in the damages inquiry would be struck out. They were so struck out.

Damages of £236,766 were awarded based on unchallenged assertions of the Claimant’s losses. A further £20,000 was sought by way of damage in the form of moral prejudice. The judge referred to the Intellectual Property (Enforcement, etc.) Regulations 2006/1028 which provide for the consideration of moral prejudice in assessing damages, noting that the case law on its meaning “remains sparse”. It was clear, he said, that it covered losses other than economic losses. The only such losses that the Claimant appeared to have identified was the “severe frustration” it experienced as a result of the Defendants’ conduct. Sadly, held the judge, this was something many litigants could routinely claim to have experienced and not a basis for damages under this head.

6. Trade evidence or expert evidence in trade mark cases – a helpful refresher

Lifestyle Equities v Royal County of Berkshire Polo Club Ltd [2022] EWHC 1244 (Ch) (May 2022)

Yet another Lifestyle Equities case, this one about evidence. A lot of evidence types are unpopular with the English court in trade mark cases. Surveys have been out favour for years, and expert evidence is far from routine. Evidence of non-confusion is rarely appropriate, and although welcomed evidence of actual confusion is routinely absent. So how to decide trade mark cases other than by asking the judge to retreat to her chambers to flip a coin?

The Defendant adduced witness statements which included “trade” evidence, that is evidence about the nature of the relevant market for the goods and services in dispute which is given by a witness of fact, not by an expert witness (the latter being subject to the permission of the Court and specific duties to the Court). Fenty v Arcadia [2013] EWHC 1945 (Ch) confirmed a long line of authority that this kind of evidence was admissible.

PD57AC (a Practice Direction in the UK’s Civil Procedure Rules) came into force on 6 April 2021. It imposes a degree of reinvention of the nature of a witness statement and what should go in one. Its purposes include to “eradicate the improper use of witness statements as vehicles for narrative, commentary and argument” (see paragraph 37 of Mansion Place v Fox Industrial Services [2021] EWHC 2747 (TCC)).

The Claimant sought to leverage the PD and argue that Fenty was wrongly decided, applying for an order that passages of the Defendant’s trade witness statements should be struck out and not considered at trial. The Claimant’s arguments were rejected and the evidence left for consideration by the trial judge. The application judge, Mr Justice Mellor, warned against using the PD as “a weapon with which to fillet from a witness statement” small amounts of words or insignificant breaches and only to make an application to strike parts of a statement in the case of substantial breach of the PD.

For those still getting to grips with the new PD just over a year old, the judgment is well worth a read.

7. Samsung directly liable for third party smartwatch face copycats on its app store

Montres Breguet SA v Samsung Electronics Co. Ltd [2022] EWHC 1127 (Ch) (May 2022)

If you have a Samsung smartwatch you can download custom watch faces from the Samsung Galaxy App store provided by third parties. Predictably, these third parties made available watch faces copied from watches made by others including the Swatch group of companies (which owns brands like Tisso, Omega and Breguet). Those watch faces bore Swatch’s trade marks. The fact that this was found to be an infringement is no surprise. Of more interest is that Samsung – the service provider – was held directly liable for such infringement.

An infringing Jacquet Droz watch face

Samsung claimed it didn’t “use” the trade marks at all, the third party uploaders on its app store did. Swatch disagreed, arguing that Samsung’s active behaviour and control over the app store and its contents took this case away from Google France and L’Oréal v eBay and into Cosmetic Warriors Limited v Amazon.co.uk territory.

The judge preferred Swatch’s argument. Taken as a whole, Samsung’s activities in relation to the app store – including providing a tool to help developers create apps for the store; hosting developer conferences; entering into licensing arrangements with app makers; and reviewing all apps before they are permitted on the store – went beyond that of simply being an online marketplace and placed them into direct infringement territory.

Was there nevertheless a hosting defence under Article 14 of the e-Commerce Directive? No – the active nature of Samsung’s role which landed it in hot water in the first place also removed its ability to invoke this defence.

IPKat here.

8. A Warning Letter Is Not Enough: if you don’t sue, you’re still acquiescing

Case C-466/20 HEITEC AG v HEITECH Promotion GmbH, Court of Justice of the EU (May 2022)

Under both UK and EU law, a party that acquiesces for a period of five years in the use of another party’s trade mark registration is barred from challenging the use of the mark. Is sending a warning letter enough to stop the five year period running?

Under EU law, no, says the CJEU. The Claimant Heitec adopted its name as early as 1991, the Defendant Heitech in around 2004. The Defendant first approached the Claimant to seek a coexistence agreement but this apparently went nowhere. It wasn’t until 2008 that the Claimant sent the Defendant a warning letter, and it then waited until the last day of 2012 to sue in Germany, although it appears there were procedural faults with the claim so it did not actually start until 2014.

The CJEU explained that acquiescence involves “remain[ing] inactive even though it is aware of the use of a later mark which it would be in a position to oppose”. It is “failing to take measures open to it to remedy the situation”. It held that Heitec has failed to carry out an act “that clearly expressed its wish to oppose that use and to remedy” the infringement. A warning letter did not cut it.

So there you have it – you have to put your money where your mouth is. If you became aware of a use, the clock starts running and you have to sue before five years is up.

9. AG Spuznar doesn’t think Amazon should be directly liable for infringements committed by its sellers, despite its involved business model

Joined cases C-148/21 and C-184/21 Louboutin/Amazon, Opinion of Advocate General Spuznar (June 2022) – link to French decision, not yet available in English

The UK and the EU may have gone their separate ways, but I expect it will be some years before we cease to take any account of the CJEU’s jurisprudence on trade mark matters. Interesting then that this opinion points in a different direction to the Samsung decision above.

Louboutin makes shoes, Amazon sells things and facilitates others to sell things. Is Amazon using the marks itself where third parties market their goods on its platform? In Samsung the answer was yes but in this case, the AG advises the CJEU to rule that Amazon does not, meaning that it would not be liable for direct trade mark infringement. The AG’s opinion is given notwithstanding that Amazon blurs (in my view) the line between those items it sells itself and those items sold by third parties, and subject to the caveat that Amazon’s conduct does not lead the “normally informed and reasonably attentive Internet user to perceive the trade mark in question as forming an integral part of the commercial communication of the operator”. That bit is a machine translation from French, perhaps helping to explain why I have no idea what it means. Let’s see what the CJEU says.

IPKat here.

10. Au Revoir Rodney as it’s a lovely jubbly win for Shazam in Only Fools and Horses copycat showdown

Shazam Productions Ltd v Only Fools The Dining Experience [2022] EWHC 1379 (IPEC) (June 2022)

The chandelier scene in Only Fools and Horses, first broadcast in 1982 when I was far too young to appreciate it, remains (in my humble opinion) the most perfectly executed comedy moment in TV history. If you aren’t familiar with Only Fools and Horses, it is an iconic British television series featuring the exploits of, amongst other classic characters, Del Boy and Rodney, the Trotter brothers. Despite its last episode having aired in 2003, it remains very well loved.

The Claimant owns the rights to the show. The Defendant runs an unauthorised interactive dining experience – a three-course dinner combined with a show featuring many of the Only Fools characters – and has done so since 2018. A claim for copyright infringement and passing off was issued in December 2019.

As has been widely reported, Shazam has now won. Retromark rarely strays into copyright, but that was the main basis of Shazam’s successful claim. In a novel judgment, John Kimbell QC, sitting in the IPEC as a Deputy High Court Judge, decided that the character of Del Boy was a literary work and one which had been substantially reproduced as part of the Defendant’s performance. The judge drew on the two stage test from the CJEU in Cofemel – the character was (1) original; and (2) identifiable with sufficient precision and objectivity in the scripts for Only Fools. Subsistence satisfied, infringement was straightforward given the clear intention of the Defendants to replicate the character as closely as possible.

A defence of parody failed – the Defendant did not parody, it sought to replicate wholesale, and there was no fair dealing.

Passing off was also found, albeit it was dealt with very briefly and was clearly not the focus of the battle. That’s interesting in itself – part of me thinks a passing off claim would have been much more straightforward.

But of course the finding that a character can be a copyright work is very interesting and one which will be of great interest to businesses operating in media and entertainment. I wonder if it will be appealed?

IPKat here.

Cushty

Thanks to my colleague Eliza Jones for helping me collate this volume.

Volume I – April 2016 to March 2017

Volume II – March 2017 to September 2017

Volume III – November 2017 to April 2018

Volume IV – May 2018 to October 2018

Volume V – November 2018 to March 2019

Volume VI – April 2019 to October 2019

Volume VII – October 2019 to April 2020

Volume VIII – April 2020 to October 2020

Volume IX – November 2020 to May 2021

Volume X – April 2021 to December 2021