IL-2023-000007 - [2025] EWHC 2863 (Ch)

Section 10(1) TMA provides that:

“A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.”

Section 10(1) thus provides for infringement absent any likelihood of confusion (which is required under section 10(2)), but it depends on identity between the mark and the sign and identity of goods and services.

The law on infringement under section 10(1) was summarised by Arnold LJ in Easygroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247 (“Easygroup”) at [48] by reference to six conditions, namely:

“(i)

there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect, or be liable to affect, one of the functions of the trade mark”.

In this case there are issues as to (ii), (iv), (v) and (vi). The burden of establishing (ii), (iv) and (v) lies with the trade mark proprietor. However, as Ms Bowhill submitted in closing, the claimant in a section 10(1) case benefits from a rebuttable presumption of likelihood of confusion (see Bentley 1962 Ltd v Bentley Motors Ltd [2020] EWCA Civ 1726; [2021] FSR 14 per Arnold LJ at [30]-[34] and Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] FSR 18 (“Muzmatch”), per Arnold LJ at [116]). Stability has not sought to advance any pleaded case that, notwithstanding any double identity that may be established, there is no effect on the function of the trade mark such that the presumption should be rebutted.

I did not understand the applicable legal principles to be controversial, although their application to the facts of this case is in dispute. I shall set out the legal principles in the following section before dealing with their application when conducting the global assessment.