Case No. EWHC-941-(IPEC)

133.The final condition in relation to a potential liability under s.10(3) is whether Muzmatch’s use of its Signs was without due cause. 134.In Planetart, Mr Alexander Q.C. noted (at [40]) that the onus of proof is on the defendant to show that it did have due cause. He then went on at [42]-[45] to make the following points regarding the issue of due cause:“42 First, having regard to the general principles of trade mark law, which require consideration of marks as a whole, the question of whether (for example) there are interests of other economic operators having signs capable of denoting their products and services justifying the use of the sign must be evaluated by reference to the mark and sign taken as a whole. In the case of a mark composed of a number of elements, the court should consider whether those interests should reasonably permit the use of all of those elements in combination, not merely some of them. 43 Second, the approach should not be so strict that it is only where a defendant proves that there is no practical alternative at all to the use of the sign in question that a defendant's sign would be regarded as being used with due cause. There has to be some degree of latitude, which will depend on the circumstances of the trade. However, it must be borne in mind that this provision only comes into play after it has been found that there is not only a link between the registered trade mark and the sign but also that it has taken unfair advantage or is detrimental to the distinctive character of the trade mark in the sense that the case law has required. That does raise the bar for a defendant to show that the use of the sign is nonetheless with due cause.44 Thirdly, where the registered mark includes descriptive elements (or other elements which are less likely to have trade mark significance—such as a colour or design) and the case for application of s.10(3) is largely based on the common use of such elements, the easier will it be for a defendant to show that the use of those elements is with due cause. That approach gives effect to the purpose of the law articulated in Leidesplein and Argos.45 Fourthly, cases are highly fact dependent but the court should seek a proportionate response. The greater the intrusion into the trade mark proprietor’s legitimate interests in the ways that the law seeks to protect against, the stronger will need to be the defendant’s justification for nonetheless using the sign in question.”135.It seems to me that, in a case such as the present, the factors to be considered in relation to the issues of unfair advantage and of due cause are much the same. On this basis, given my finding that Muzmatch had taken unfair advantage of the distinctive character or reputation of the Match Marks and given that Match is not seeking to prevent descriptive uses of the word “match”, then Muzmatch has not established that its conduct was with due cause.