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

As to ‘use’, the TMA provides a list of specific activities which are deemed to be use of a sign, at 10(4):

“For the purposes of this section a person uses a sign if, in particular, he—

(a)

affixes it to goods or the packaging thereof;

(b)

offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

(c)

imports or exports goods under the sign;

(ca) uses the sign as a trade or company name or part of a trade or company name;

(d)

uses the sign on business papers and in advertising

(e)

uses the sign in comparative advertising in a manner that is contrary to the Business Protection from Misleading Marketing Regulations 2008.”

As Arnold LJ observed in Montres Breguet at [56] (with reference to various CJEU decisions, which I have removed):

“The CJEU has repeatedly held that a party only “uses” a sign for this purpose if it uses that sign “in its own commercial communication…A person may allow its clients to use signs without itself using those signs…Merely creating the technical conditions necessary for the use of a sign and being paid for that service is not sufficient to amount to use…”.

For a claim to trade mark infringement to succeed, there must be some “active behaviour” on the part of the defendant “and direct or indirect control of the act constituting the use”, such as ‘affixing’ the sign on the goods, or ‘offering’ or ‘supplying’ services under that sign. Acts carried out by an independent operator without the consent of the defendant or against his express will cannot be attributed to a defendant as an infringing use of the sign. (See C-179/15 Daimler AG v Egyud Garage EU:C:2016:134 (“Daimler”) at [39]-[40] and Coty Germany GmbH v Amazon Services Europe SÀRL (ECJ) [2020] Bus LR (“Coty”) at [37] and [38]). An e-commerce platform like eBay is not responsible for any infringing use where its users list counterfeit or grey market goods for sale on eBay’s website – it merely enables that use to be made by its customers (see C-324/09 L’Oréal SA v eBay International AG; [2012] Bus LR 1369 (“L’Oréal v eBay”) at [103]-[105]). A service provider who creates the technical conditions necessary for the use of the infringing sign and is paid for that service will not without more have any legal responsibility itself for use of the sign (see Coty at [43] and Google France Sarl v Louis Vuitton Malletier SA (C-236-238/08) [2011] Bus LR 1 (“Google France”) at [52]-[57]).

The CJEU has held in a long line of cases that use “in the course of trade” requires (i) use in the context of a commercial activity with a view to economic advantage; and (ii) use that is a non-private matter (see C-206/01 Arsenal Football Club v Reed (ECJ) [2003] Ch 454 (“Arsenal Football Club”) at [40]). The meaning of this test has been the subject of debate; specifically as to whether the words “not a private matter” impose a separate criterion or are simply intended as providing a contrast to the words “in the context of commercial activity” (see Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch); [2011] FSR 11, per Arnold J at [56]-[66] and APT Training & Consultancy Ltd v Birmingham & Solihull Mental Health NHS Foundation Trust [2019] EWHC 19 (IPEC), [2019] ETMR 22, per HHJ Melissa Clarke at [29]-[39]). It is not clear to me that I need to grapple with this debate on the facts of this case.

Use of a sign “in relation to” goods and services means use “for the purposes of distinguishing” the goods and services in question from those of other suppliers, and use such as to create the impression that there is a material link in the course of trade between the goods or services concerned and the undertaking from which those goods or services originate (see Merck KGaA v Merck Sharp & Dohme Corp [2017] EWCA Civ 1834 [2018] E.T.M.R.10 (“Merck”), per Kitchin LJ at [172]-[173] and the extracts from the decision of the Court of Justice in Céline SARL v Céline SA (C-17/06) (“Céline”) at [20]-[27] as set out by Kitchin LJ at [174] in Merck).

It is clear from these passages in Céline that use (without more) of a business or trade name will not be in relation to goods and services. This is because:

“21.

The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services (see, to that effect, Case C-23/01 Robelco [2002] ECR 1-10913, paragraph 34, and Anheuser-Busch, paragraph 64). The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive.

22.

Conversely, there is use ‘in relation to goods’ within the meaning of Article 5(1) of the directive where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets (see, to that effect. Arsenal Football Club, paragraph 41, and Adam Opel, paragraph 20)”.

23.

In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party”.

At [275] in Merck, Kitchin LJ went on to say that:

“The question must always be whether the activity complained of constituted use of the offending sign in the UK and in such a way that consumers were liable to interpret it as designating the origin of the goods or services in question”.

The issue of how the use of the sign will be perceived by the average consumer is a matter for the court to assess on the evidence (Kerly at 16-037).