Condition (ix) – without due cause
86. The final condition in relation to a liability under s.10(3) is whether Battle’s use of the word mercury was without due cause. As explained by Kitchin LJ in Comic Enterprises at [123]:
“… the concept of due cause involves a balancing between, on the one hand, the interests which the proprietor of a trade mark has in safeguarding its essential function and, on the other hand, the interests of other economic operators in having signs capable of denoting their products and services…”
87. As I understand it, Battle’s argument is that it did not act without due cause because the word mercury was essentially descriptive. For the reasons set out earlier in this judgment, I reject that argument and I find that Battle’s actions were without due cause.
- Claim No. IL-2020-LIV-000001
- Introduction
- The witnesses
- The issues
- The trade mark issues – general points
- Relevance of EU law
- The average consumer
- section 3(1)
- Is the word mercury descriptive?
- Is use of the word mercury customary?
- Invalidity - bad faith, s.3(6()
- Infringement – the acts said to infringe the trade mark
- Infringement –
- s.10(1) Trade Marks Act 1994
- s.10(2) Trade Marks Act 1994
- Condition (iv)
- Condition (v)
- Condition (vi)
- s.10(3) Trade Marks Act 1994
- Condition (i) - reputation
- Condition (v) - sign at least similar to mark
- Condition (vii) - a link
- Condition (viii) - injury
- Condition (ix) – without due cause
- The s.11(2) defence
- Trade mark infringement - conclusion
- Passing off
- Joint tortfeasorship
- Conclusion