Case No. EWHC-3296-(IPEC)

66. Equisafety’s final trade mark claim is that Battle’s actions amounted to an infringement of its trade mark under s.10(3) of the Trade Marks Act 1994. Section 10(3) states that: (3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services, a sign which— (a) is identical with or similar to the trade mark, … where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 67. Section 10(3A) then provides that s.10(3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered. 68. In order to establish infringement under s.10(3), nine conditions must be satisfied, namely: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a “link” between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause. 69. In this case, conditions (i), (v) and (vii)-(ix) are in issue.