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

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

Retromark Volume XIII: the last six months in trade marks

by Darren Meale

I can only apologise for having again taken longer than six months to compile this volume, which instead spans the best part of 2023 – although attendees at Retromark: the conference back in May will have had a chance to hear about some of its highlights already. At least I’ve got this to you before you sit down for your first Christmas lunch (CITMA on 1 December, I’m looking at you).

1. ICE, ICE, acquiescence maybe?

Industrial Cleaning Equipment v Intelligent Cleaning Equipment [2023] EWHC 411 (IPEC) (February 2023)

The case title might suggest this is a battle between two highly descriptive marks (ala Office Cleaning), but in fact both of these floor cleaning equipment companies had adopted the abbreviation ICE. The claimant had goodwill dating back to 1992 and registrations from October 2015. The defendant had been using since 2013 with registrations from June 2015. Floor cleaning appears to be big business, with the claimant enjoying more than £17m in turnover in 2020 (boosted by the pandemic, perhaps?).

The claimant successfully claimed infringement and the invalidity of the defendant’s registrations before HHJ Melissa Clarke sitting in the IPEC.

The long history of the parties’ joint presence on the UK market clearly added a degree of complexity to the judgment, which contains a detailed review of each side’s business over the years. It is also a neat illustration of the potential for trade mark disputes to arise, and be aired in court, long after the competing brands enter the market.

The judge concluded that the claimant’s goodwill knocked out the defendant’s trade mark registrations by way of a passing-off claim, and it was then able to prevail in an infringement claim based on its own trade mark registrations (one would imagine that it would have prevailed on passing-off as well, but the judge declined to deal with this separately, wearily concluding “This judgment is too long already”).

The defendant attempted several defences, with the one based on statutory acquiescence under section 48(1) of the Trade Marks Act 1994 perhaps the most interesting – and I am definitely not saying that just because I know an appeal on this point was heard by the Court of Appeal earlier in November. Acquiescence is a topic of interest following the CJEU in Heitec (see Volume 9) and the UK Court of Appeal in Combe (see Volume 12). The primary dispute on this point was when the five year period, after which the claimant would lose its right to challenge the defendant’s use, began to run. The defendant’s earliest registrations were registered from May 2016, though the claim appeared to have kicked off in 2021 (although I could not identify exactly when from the judgment).

The judge devoted a good 20-something paragraphs to this issue, eventually concluding that the relevant date was 26 July 2019, because this was the earliest date – on the facts – by which the claimant knew of both: (a) the defendant’s use of its 2015 mark; and (b) the existence of the defendant’s registration of its 2015 mark. So: no joy on acquiescence, because five years wouldn’t be up until 2024. We’ll return to this issue in the next volume to see what the Court of Appeal has made of it.

2. No double diamond infringement for Umbro – but was its logo harmed by being too closely associated with the brand name?

Iconix Luxembourg Holdings v Dream Pairs Europe [2023] EWHC 706 (Ch) (March 2023)

Some of you may recognise the Umbro “double diamond” logo (owned by the claimant) below. Is there a likelihood of confusion between it and the defendant’s logo for footwear, including in respect of football boots?

“No”, said Mr Justice Miles in a succinct judgment following a two day trial. This conclusion was reached despite a finding that Umbro’s logo enjoyed a substantial reputation and a highly distinctive character for football boots and kit and some very limited evidence of online confusion. The judge simply felt that the marks shared “at most a very low degree of similarity… it is very faint indeed”.

That is likely the right conclusion. There is something instinctive about comparisons of pure logo marks, and it is clear that these are not the same. Their similarity is best described as turning on their shared use of simple geometric shapes, with differences beyond that.

One aspect of the judge’s reasoning is suspect. The judge found that the average consumer who was already aware of the Umbro logo would “make a mental association between the [logo] and the Umbro brand name”. This led the judge to conclude that, where the defendant’s products were sold on Amazon alongside the brand name “Dream Pairs” and without reference to Umbro, this would be noticed by the average consumer and tend against confusion. This cannot be right: for one, it considers only consumers who know the Umbro brand, but the registration is for a logo without reference to Umbro. Secondly, it punishes the claimant for its reputation and distinctive character – in combination with another mark – whereas that reputation and distinctiveness should surely be a factor in favour of the claimant. The CJEU has said that the extensive use which is made of a mark is relevant to the assessment of confusion in Specsavers v Asda (C-252/12), but I think the judge has stretched that principle too far.

Lots of options to read more about this case here.

3. Lidl’s logo wins without a word: the year’s most controversial judgment?

Lidl Great Britain v Tesco Stores [2023] EWHC 873 (Ch) and [2023] EWHC 1517 (Ch) (April, June 2023)

This spring/summer blockbuster stretches to 317 paragraphs in its main judgment plus another 50 in the form of order judgment. It would be a significant understatement to describe the High Court’s decision as controversial.

Lidl sued Tesco because, it claimed, Tesco’s Clubcard logo infringed its trade marks and copyright in its own logo, relying on versions with and without text (see the competing depictions below). Despite many of us trade mark lawyers doubting the scope of protection of what was little more than a circle of one colour on a square of another, Lidl won – convincingly. The judge found trade mark infringement (of both the logo with and without the word “LIDL”), passing-off and copyright infringement. On trade mark infringement, Lidl prevailed on 10(3) infringement – unfair advantage and detriment to distinctive character – having not even dared to argue a likelihood of confusion. But the judge was clearly satisfied one existed anyway.

It is easy to agree with the defendant’s submission that such an outcome would "fly in the face of 150 years of trade mark jurisprudence", but to give credit to the trial judge, this case was not just about comparing two signs in isolation. It involved absorbing and taking account of a very significant amount of evidence in what was a very hard fought case. The judge clearly worked hard to make sense of the testimony of eight fact witnesses, expert evidence, and a heap of documentary evidence and disclosure.

Yet I cannot help but agree with many in thinking that, having battled through the detail, what was lacking was a step back to look at the big picture and ask: should either of these marks offer sufficiently broad rights so as to prevent the use of a coloured circle, often overlaid with a completely different word?

Tesco’s only consolation prize was its success at knocking out a number of repeat logo filings by Lidl on the grounds of evergreening and bad faith.

This one is almost certainly on its way to the Court of Appeal (where it has already been on an interlocutory matter covered in Volume 12). IPKat here and here.

4. Court of Appeal finds no reason to swipe right in MATCH v MUZMATCH online dating dispute

Match Group, LLC v Muzmatch Ltd [2023] EWCA Civ 454 (April 2023)

“MATCH” is hardly a distinctive trade mark for an online dating, aka matchmaking, service. So I was surprised to find that Match.com had prevailed in the IPEC in its trade mark claim against Muslim-focused rival Musmatch back in April 2022 (see Volume 11), more than a decade after Musmatch launched.

The Court of Appeal was invited to reach a different conclusion, but declined to do so. As us trade mark lawyers know well, first instance decisions are rarely overturned absent an error of law or principle. Surprise at the outcome is not enough to engage the revisionary powers of our Lord Justices of Appeal.

As ever, the Court of Appeal, led by Arnold LJ, concluded that there was nothing wrong with the judge’s multifactorial assessment on this occasion. Arnold LJ spent the most of his judgment considering the impact of the 10+ years of coexistence, but still concluded that the judge was alive to this and it was for him to decide how much or how little weight to give it. Appeal dismissed.

5. 23 is not a magic number

Maison Margiela Magic Numbers, EUIPO Board of Appeal Case R 1967/2022-1 (May 2023)

Retromark might be said to have something of a fetish for non-traditional marks (it’s not alone?). To make up for their absence in this volume, I’m featuring Margiela’s EUTM application for the numbers 0 to 23, written out in plain font over three lines and applied for in respect of goods ranging from candles to the retail of smartwatches.

You’ll be asking, “but why?”, and the answer is best understood if you put your mind into the world of high fashion where things do not always have the same meaning that us logical lawyers attribute to them. There’s an explanation here, but the numbers seem to represent some sort of minimalist branding with each of the 23 signifying a particular product line.

The EUIPO Board of Appeal, which often appears to think more like a robot than some modern day robots, was not interested in thinking like a fashionista. It agreed with the Opposition Division that this mark lacked distinctiveness, and should not be registered. IPKat here.

6. Video editing stitch up flawed says the High Court, sends it back to the UKIPO

Stitch Editing v TikTok Information Technologies UK [2023] EWHC 1167 (Ch) (May 2023)

TikTok, reportedly now the primary news source for British teenagers on social media, successfully opposed the registration by Stitch Editing of the mark “STITCH” for video editing and other film and video services on grounds that it was non-distinctive and descriptive. Stitch Editing appealed to the High Court. Was there a point of principle or error of law made which would persuade the judge, Sir Anthony Mann, to interfere with the UKIPO’s first instance decision? He concluded: yes!

The UKIPO Hearing Officer found that “stitch” was a way of joining things together – no big surprise there. She also concluded that in the context of video editing, that particular meaning of “stitch” was known and so the mark was descriptive of its services. However, on appeal, Stitch Editing’s arguments focused on an allegedly inappropriate leap from a finding that the technique of joining video together might be described by reference to “stitch” to a finding that the mark was descriptive of the actual services of the application. Those services were not just video editing (where perhaps the conclusion was more obvious) but also included services like “music, film and video production” where it was much less clear how those services would inevitably contain a "stitching" activity which would lead to the average consumer considering the word to be descriptive.

The Hearing Officer had dealt with all the services together, without giving any real reasoning to support her conclusion. As the judge noted, “It is not clear how she jumped from her conclusion as to the potential meanings of STITCH to her conclusion as to descriptiveness in relation to all the services”. This meant her decision was flawed.

The Hearing Officer was also held to have fallen into error in her approach to assessing Stitch Editing’s alternative position that its mark had acquired distinctiveness, the judge finding that she had not considered all of the evidence before her.

The judge declined to plug the gaps and decide the case for himself. Instead he remitted it back to the UKIPO for a fresh determination of the relevant points.

There’s some context to this case: it is part of a much broader dispute over TikTok’s use of “Stitch” as a “creation tool that allows you to combine another video on TikTok with one you're creating”. TikTok has already resisted an infringement claim (for $116m in damages) in the US courts. Is TikTok going to pull off the rare feat of using a word as a badge of origin and then defeating someone else’s mark on the basis that it cannot be a badge of origin?

7. A crowded market squeezes out any hope of a Beverly Hills Polo Club victory

Lifestyle Equities CV v Royal County of Berkshire Polo Club [2023] EWHC 1839 (Ch) (July 2023)

Lifestyle Equities is fast becoming one of the super users of the English courts, with not one but two pending decisions from the UK Supreme Court, one in their claim against Amazon and another on accounts of profits.

In the present claim, the Claimant relied on its polo club logo to attack the defendant’s rival polo club logo (see images below). The defendant’s core defence was that it was one of many “polo” brands which have coexisted peacefully for many years, and it adduced a considerable amount of market evidence to support this.

There were some unfortunate shenanigans involving some of the claimant’s “evidence”, which led the judge to add the inverted commas when describing it, and to conclude that the claimant’s Managing Director’s “…evidence significantly exaggerated the position. His evidence was misleading”. That said, not all of the defendant’s evidence escaped unscathed either.

However, what did emerge from the evidence was a conclusion by the judge, Mr Justice Mellor, that with the exception of Ralph Lauren Polo, the average consumer could not rely on a horse and rider motif “as reliably indicating trade origin”. The judge also concluded that the words “POLO CLUB” – the only words shared between the marks in dispute – were not distinctive. Having noted that “one might say that some form of horse and rider motif is almost de rigeur for one of these ‘polo’ brands”, it is unsurprising that the judge held that there was no likelihood of confusion between the marks and that the Claimant’s claim should fail.

The judgment encompasses a massive 352 paragraphs, in part because, unusually, the parties had agreed that the UK court’s decision would also address their parallel disputes in six other territories, including the whole of the EU (applying UK/EU law in each case). The judge found infringement in none of them.

I may have misheard but I believe this might also be on the way to the Court of Appeal on the crowded market point. IPKat here.

8. Testarossa mark gone but not forgotten

Kurt Hesse v Ferrari SpA Cases R 334/2017-5 and R 343/2017-5, EUIPO Board of Appeal (August 2023)

In an interesting decision on genuine use, the EUIPO Board of Appeal revoked the trade mark registration for the undoubtedly renowned sports car TESTAROSSA.

Production of this 80s icon ceased in 1996, so the only “use” Ferrari could rely upon to prove use of its registration within the EU related to the sale of second-hand cars by auction and private sale by third parties. The CJEU has found that a proprietor makes use when reselling second-hand goods (see Ferrari SpA v DU (C-720/18) and Ansul BV v Ajax Brandbeveiliging BV (C-40/01)), but that principle did not extend to resales by third parties, which was all the evidence showed here.

The Board of Appeal provides a detailed explanation of the law and its application in this area. It is interesting to see that, where the reputation of a mark long outlasts sales of the products in question, that lingering fame doesn’t provide much assistance in maintaining the registration. For more, see the IPkat here.

A Testarossa! © Vauxford

9. Vetsure is all bark and no bite in pet insurance showdown with Petsure

TVIS Ltd v Howserv Services [2023] EWHC 2589 (Ch) (October 2023)

I will keep this one brief as I acted for the successful defendants, who resisted a claim for trade mark infringement and passing-off against their use of “PETSURE” for pet insurance, brought by the claimant who also offered pet insurance but under the name “VETSURE”. The defendants argued that, in a market in which consumers knew that the suffix “-sure” meant insurance, where that was the only common element in the two marks and where both PET and VET clearly described the parties’ services, the claimant’s trade mark rights enjoyed a limited monopoly – one that did not entitle it to prevent use of the defendants’ sign.

The judge, Ian Karet, sitting as a Deputy High Court Judge, agreed, quoting The European v The Economist [1998] FSR 283 where the Court of Appeal noted: “…Where descriptive words are included in a registered trade mark, the courts have always and rightly been exceedingly wary of granting a monopoly in their use”. The judge concluded that “This is such a case”.

The judgment contains an interesting consideration of alleged evidence of confusion, and the distinction between trade mark confusion on the one hand and “administrative” confusion on the other.

Bristows (who were not involved in the case) provide a longer write-up here, albeit with a terrible set of puns in the title (and that’s saying something coming from someone who started this volume with “ICE, ICE, …maybe”).

10. Lidl loses to Lidl at the Company Names Tribunal: 19 years after incorporation

Lidl Logistics Ltd v Lidl Stiftung & Co KG [2023] EWHC 2760 (Ch) (October 2023)

The Company Names Tribunal (which unfortunately abbreviates to CNT) is an essential part of the busy trade mark practitioner’s toolkit, but it does not come without its limitations (its staunch refusal to send me things by email, for one).

This case is a rare appeal from a decision of the CNT to the High Court, in an unusual case. Supermarket giant Lidl was able to persuade the CNT that its rights in the name “LIDL” should require Lidl Logistics Ltd to change its company name. While most complaints to the CNT concern newly incorporated companies, Lidl Logistics Ltd began life in 2004, before section 69 of the Companies Act 2006, which brought in the jurisdiction of the CNT, came into force. The CNT found this was no bar to a complaint by the supermarket and this was upheld by the High Court, whose judgment includes a detailed discussion on the extent to which such an interpretation imposed a retrospective change to Lidl Logistics Ltd’s rights given that the jurisdiction to challenge it did not exist when it was incorporated.

CNT users will know that there are a number of fairly simple defences available to companies who find themselves subject to a complaint. For one, merely trading as a legitimate entity is enough, for that pushes the matter into the realms of a trade mark dispute and the CNT prefers the Court to deal with those. Given that Lidl Logistics Ltd was nearly 20 years old, I read this judgment looking for that defence. But it records that the director/owner’s “witness statement had said that the company had not traded and he did not intend to trade it as he was 72 years old at the time and retired.” Like me, this led the judge to ponder: “One does have to wonder, given those facts, why Mr Hogger is so doggedly resisting the change of name.” Let’s hope the Court was kind to the pensioner appellant when assessing costs…

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That’ll be it for 2023 – see you in 2024!

Thanks to my colleagues Alan Thomas, Naomi Anahory and Yoram Goodman 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
• Volume XI – January 2022 to June 2022
• Volume XII – July 2022 to February 2023