More than a ‘box of flowers’, FLOWERBX is good enough for Posh Spice and not descriptive of florist-related goods and services

Do an online search for FLOWER BOX and you will likely stumble across two types of flower-related products: (1) a box for planting flowers sometimes referred to as a ‘planter box’; and (2) a gift box for flowers. While the latter can be purchased separately through suppliers like Amazon, florists, in this Kat’s view, commonly use the term to advertise floral box arrangements. However, the Intellectual Property Enterprise Court (IPEC) of England and Wales recently found differently in FLOWERBX LTD v FLOWERS BOX LONDON LTD.

Photo by Dana Sarsenbekova on Unsplash

Background

In July 2017 FLOWERBX LTD was granted a trade mark for the word ‘FLOWERBX’ for classes 31 and 35, amongst others (the Mark). It was used to describe a company that provided an online solution for the ‘kinds of elegant and modern flowers generally used in high-end fashion businesses’. The CEO, Brittany Bromberg Hawkings, would later describe it as sounding ‘modern, disruptive and fashion-forward’ likening it to the impact of Uber, Netflix and Airbnb but for the global florist industry.

Setting aside ‘disemvowling’ as an indicator of disrupter status (see Flickr vs Abrdn), FLOWERBX LTD commenced trade mark infringement proceedings against FLOWERS BOX LONDON LTD in June 2025. They alleged that the use of ‘FLOWERSBOX’, ‘FLOWER BOX’, and ‘FLOWERS BOX LONDON’ contravened ss 10(2)(b) and/or (3) of the Trade Marks Act 1994 (TMA).

The defendant argued that there was no infringing use, counter-claimed that ‘FLOWERBX’ was invalid pursuant to s 3(1)(c) of the TMA, alleged non-use, and simultaneously applied to register 3 related marks. Eventually the list of issues to be tried was reduced to the following: the enhanced distinctive character of the Mark, whether the Mark should be declared invalid pursuant to s 3(1)(c) of the TMA, and whether the Mark had been infringed.

A ‘box of flowers’ or a ‘box for flowers’

Despite some initial confusion over which characteristics of the goods/services FLOWERBX described, the court agreed with the Claimant that the relevant classes were 31 and 35. These broadly relate to natural plants and flowers, flower bouquets, and cut flowers, amongst others, in a retail, online or wholesale setting. The provision intends to prevent traders from registering words that other traders might legitimately want to use in the course of their business. It requires establishing a sufficiently direct and specific relationship between the sign and the goods/services to enable the public to immediately perceive, without further thought, a description of the goods/services and one of their characteristics (Starbucks (HK) v British Sky Broadcasting). Although neologisms often fall outside the ambit of descriptiveness, FLOWERBX was instead categorised as a combination of words: ‘flower’ and ‘box’.

Despite the descriptiveness of both words, the court stated that the test is:

[W]hether the Mark enables the average consumer to immediately identify, without further thought, a characteristic or description of the goods or services in question, that is, to recognise that the words denote some characteristic of the goods/services in issue.

The court found that the Defendant failed to specify which characteristic of the goods/services ‘flower box’ described, instead arguing that FLOWERBX described a ‘box of flowers’. Remarkably the Defendant failed to submit sufficient evidence that ‘flower box’ would be understood by the relevant public to refer to a floral arrangement in a box. Referring to the ordinary and natural meaning of ‘flower box’ as a box in which flowers are contained, the court emphasized that it primarily refers to the box itself, not the flowers arranged in it. This narrow interpretation meant that ‘flower box’ is not descriptive of any of the challenged goods in classes 31 or 35, and remained inherently distinctive.

The link between reputation and acquired distinctiveness

Although the Defendant accepted that the Mark had acquired a distinctive character, it was submitted that it was limited to ‘luxury and stylish floral design of the highest quality’ based on the Claimant’s own description of their reputation in pleadings – including a reference as Victoria Beckham’s preferred florist. Referring to Frank Industries v Nike, the court noted FLOWERBX’s increasing turnover and customers, its flagship atelier and hotel partnerships, and strong marketing campaigns to find that the business ‘has grown and has achieved media coverage in the national press and on social media at a level easily sufficient to have enhanced the distinctiveness of the mark’. The court affirmed that the ‘specification of the Mark is (naturally) not limited by reference to the quality of the goods/services’.

The likelihood of competitors ‘crashing into each other’ in the online floral market

The court relied upon FLOWERBX’s enhanced distinctive character, significant similarity between the mark and signs, identical goods and services, and predominately online businesses, to find a high likelihood of confusion. The court emphasized that given that communication likely occurs via email and perhaps phone, alongside the use of internet search engines, the visual and conceptual similarity is paramount. This was supported by a large amount of documentary evidencing relating to actual confusion.

Given the constraints of the IPEC procedure, a small minority of documents were put to the witnesses. These included emails to the Defendant that related to consumers complaining of fraud given the URL ‘wwww.flowersbox.co.uk’, inquiries of ongoing FLOWERBX orders, mistaken Trustpilot reviews, inquiries from long-standing FLOWERBX clients regarding new orders, Google Search results, and queries relating to FLOWERBX affiliated partner vouchers.

The Defendant submitted that these were administrative errors that occurred after the point of sale, not instances of confusion. Somewhat paraphrasing The European Ltd v The Economist Newspaper Ltd, the Defendant saw themselves and the Claimant as ‘relatively small players in a crowded market’ meaning that it is ‘commonplace in that market to use descriptive terms such as those included in the Mark and the Signs’. In the court’s view:

[T]hese parties may have crashed into each other despite there being many other florists in the market and online […] [but] the only likely explanation for that lies in the high degree of similarity of the Signs to the Mark and the close proximity of the parties’ activities.

Marks with a reputation

Pursuant to s 10(3) of the TMA, the court largely relied on earlier analysis relating to acquired distinctiveness and confusion. The Defendant argued that FLOWERBX’s weak distinctive character and narrow reputation, alongside a ‘crowded and descriptive market’ would not give rise to a link between their use and FLOWERBX. However, referring instances of confusion discussed above, the court found that there was a change in the economic behaviour of consumers. In particular, Mr Gajewski, a Director of FLOWER BOX LONDON, periodically visited the FLOWERBX website. They also used FLOWERBX website photographs on the Defendant’s website. The court found that this amounted to a transfer of image that took advantage of the Claimant’s reputation and marketing efforts. Although the Defendant submitted that they had due cause to use the mark, the court found that not only did they fail to specify relevant facts, but that from 2019, the Defendant was aware of the confusion caused by their signs.


Comment

This case is full of gems: From a convoluted discussion of ‘flower box’ in lieu of any evidence of the average consumer’s understanding that it refers to a floral box arrangement to an argument that the quality of a good/service can limit the scope of protection when assessing acquired distinctiveness. Even the court jumps in on the madness by explaining that consumers mistakenly searching for the Claimant by using the words ‘Flower Box’ or ‘FlowerBox’ could ‘reflect poor typing habits of people using an internet search engine’. One thing is clear for this Kat: it is time to brush up on her interpretation skills because descriptiveness cannot hinge on whether ‘flower box’ refers to a ‘box of flowers’ or a ‘box for flowers’.