Damage
154.The Defendants submit that C has been unable to show any damage by use of D1’s 2015 Trade Marks from June 2014, but the point is the same as made previously. For the purposes of section 5(4)(a) TMA I am concerned with notional and fair use of the registered marks, and I am satisfied that is different, and would be significantly more substantial, than the very limited use made by WCS in the UK of D1’s ICE Word Mark and D1’s ICE Logo prior to their registration. There does not need to be any actual damage as this can be made out on a quia timet basis. It seems to me that given the very significant goodwill I have found in C’s ICE Sign and C’s ICE Logo built up over many years, and the misrepresentation that I have found would likely arise if notional and fair use of D1’s 2015 Trade Marks was made, the likelihood of damage to C would inevitably flow from that.
- INTRODUCTION
- ICE Group
- Killis
- C’s Trade Marks
- D1’s 2015 Trade Marks
- C’s claims in infringement and passing off
- The Defendants’ defence to infringement and passing off
- C’s invalidity case
- The Defendants’ counterclaim
- C’s Defence to Counterclaim
- Trade Mark Infringement
- Trade Mark Invalidity
- Absolute grounds for refusal of registration
- Relative grounds for refusal of registration
- Passing-off in the context of invalidity (section 5(4)(a) TMA)
- Acquiescence
- in use
- WITNESSES
- Darren Marston
- Mark Bresnihan
- Sean Edwards
- Michael Pang
- Alexander Schless
- Tibor Killi
- THE FACTS
- www.ice-clean.com
- ICE Machines
- DRYVER machines
- agreed
- THE ISSUES
- C’s invalidity claims in relation to D1’s 2015 Trade Marks pursuant to sections 47(2)(b) and 5(4)(a) TMA
- Relevant date
- Goodwill
- Misrepresentation
- Damage
- Conclusion in relation to sections 47(2) and 5(4)(a) TMA
- Statutory acquiescence – sections 48 and 5(4)(a) TMA
- Ds’ invalidity claims in relation to C’s Trade Marks
- C’s invalidity claims in respect of D1’s 2020 Trade Marks
- Sections 47(2)(a) and 5(2) TMA – Likelihood of confusion
- Sections 47(2)(b) and 5(4)(a) TMA – use liable to be prevented by Passing Off
- Ss 47(1) and 3(6)TMA – Bad Faith
- Issue 5 – Infringement of C’s Trade Marks
- Infringement by Killis
- Infringement by D3
- Passing-off
- SUMMARY
- Counterclaim