Distinctiveness of the Marks
25.The Claimant accepted that FUNTIME is a combination of two short words which make an indirect allusion to a characteristic of the goods. The Defendant submitted that the words denote a particular quality or characteristic of the goods: the toys will provide “a fun time.” Mr Kenyon’s evidence was that the UK Mark was registered only after the Claimant provided proof of use to the UKIPO, suggesting that it considered it to be inherently unregistrable. He exhibited a statutory declaration made in 1999 in relation to the EUTM which indicates that the EUIPO also required evidence of use before permitting the registration of the EUTM. 26.The Claimant submitted that the Mark FUNTIME is highly distinctive, and pointed to the use of the same mark by an unrelated Defendant in Luen Fat Metal and Plastic Manufactory Ltd v Jacobs and Turner Limited (supra). In that case there was a failed invalidity attack on the mark based on its alleged descriptiveness. Whilst the Claimant sought to rely upon the findings in that case, it does not seem to me that they are relevant to the question of the inherent distinctiveness as the Defendant here has not challenged the validity of the Marks. In my view, the inherent distinctiveness of the Marks in all three forms is low. However, as the validity of the Claimant’s registrations are not challenged, I must accept that the Marks have at least the minimal degree of distinctive character necessary to have achieved registration (Case C-196/11 P Formula One Licensing BV v OHIM, EU:C:2012:314) albeit it seems that they achieved that registration upon proof of some acquired distinctiveness.27.The Claimant submitted that I should bear in mind the finding in the earlier Luen Fat case (supra) that the UK mark had acquired enhanced distinctiveness through use. The Defendant said that I should not do so because the evidence in the two cases appears to have been different. I have not seen that evidence but agree that there do appear to have been some differences in the evidence in the two cases. In particular, I can see no discussion in the earlier judgment of the issue of goods sold under retailers’ own brands, which seems to me to be of significance. I must therefore form my own conclusions in the light of the evidence before me.28.The Claimant pleaded that the Marks had acquired a high level of enhanced distinctiveness through the use made of them. Again, there were some problems with the evidence of use upon which that claim was based. In assessing whether a trade mark has acquired a distinctive character the principles are well-settled. The court “must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) … an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character.”(per Arnold J, as he then was, in W3 v easyGroup Ltd [2018] EWHC 7 (Ch), [2018] F.S.R. 16 at [160]).29.Mr Kenyon gave evidence of the importation and sale by Padgett of millions of toys. He set out the figures in various ways, and over various periods, which I am afraid I found a little confusing, but Ms Jones accepted that Padgett had sold some 5 million toys since 2003, so the average number of sales over each year of that period is around 278,000. I was provided with no evidence as to the significance of those unit sales in terms of market share in the UK or elsewhere, but they seem to me likely to represent a small share of the relevant toy market in the UK and Ireland. Moreover, those sales figures related to both the UK and Ireland, without it being possible to know how many were sold in each jurisdiction. There was scant evidence of sales in other EU member states, just a few invoices or shipping documents addressed to customers in other states, with no evidence of the scale or duration of any such sales or of the manner (if any) of use of the Marks.30.I have already mentioned sales of the Claimant’s goods in packaging bearing retailers’ own brands rather than the Mark. No evidence was given as to the proportion of the Claimant’s goods sold in this way. Here, whilst goods sold under the retailers’ own brands bore the FUNTIME Mark moulded into them, it was not clear to me whether the Mark would have been visible at the point of sale, nor how prominently it would have been displayed on the various goods. 31.It is possible for a mark to acquire distinctiveness when is it used alongside another mark (see for example Société des produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358; [2017] F.S.R. 34 at [82]-[84]) but whether it has done so must depend upon all the circumstances of the case. There was no evidence before me indicating what a consumer seeing the moulded mark would perceive it to mean, when the packaging at least bore a retailer’s mark, but perhaps it would be seen as indicating the manufacturer of the goods. Where the goods were sold bearing a retailer’s name, I think it more likely than not that despite the moulded mark the goods would not have enhanced the distinctiveness of the Marks as indicating the origin of the goods. I think it more likely that consumers would tend to rely upon the retailer’s name in making, confirming or repeating transactions.32.The Claimant’s goods had been advertised in the trade press and at trade shows, but such use would not have been likely to affect the distinctiveness of the Marks to the average retail consumer (as opposed to members of the trade). There was limited evidence of other marketing, and none of marketing spend. The Defendant pointed out that the Claimant’s Facebook page had only 10 likes as at 15 November 2021 despite having been active since 2010. On the other hand, there was evidence that the Claimant’s goods have been marketed on Amazon for a number of years, and the Claimant pointed to the success of its Farmyard Friends toy, which was ranked at 26 under Toys and Games in 2020 (although that is well after the date when the Defendant commenced its allegedly infringing activities).33.All in all, the Claimant’s evidence in my view fell short of proving that the Marks had acquired a significant level of enhanced distinctiveness. On the basis of the evidence before me, I conclude that the use made of them would have enhanced the distinctiveness of the UK Mark to a limited extent, but I am unable to find that there was sufficient use to enhance the distinctiveness of the EUTM.