Case No. IP-2021-000046

202.Killis admits the acts complained of, set out at paragraph 9 above, have been carried out by it in the UK since it was appointed an exclusive distributor in 2019. The pleaded defences to infringement summarised above at paragraph 12 (i) to (iii) (invalidity of C’s Trade Marks, section 11(1) TMA and/or section 11(1A) TMA and section 48(1) TMA) and paragraph 12 (vii) (due cause) have not succeeded. 203.Killis argues that in respect of section 10(2) TMA infringement, there is no likelihood of confusion as a result of the circumstances of the case, and in respect of 10(3) infringement that use of the signs complained of do not take unfair advantage of, and are not detrimental to, the distinctive character or repute of C’s Trade Marks. s.10.2 Likelihood of confusion204.Comic Enterprises sets out six conditions necessary for s10(2) infringement. There is no dispute about (i) to (iii) (use of a sign by Killis within the UK, in the course of trade, without consent of the proprietor) and I have also addressed similarity of D1’s ICE Sign, D1’s ICE Logo and D1’s 2020 Trade Marks to C’s ICE Logo, and of the goods and services, which satisfies conditions (iv) and (v).205.Condition (vi) is that use of the sign must give rise to a likelihood of confusion. I am satisfied of the likelihood of confusion on the part of the public in relation to Killis’s use since I have Mr Killi’s evidence of actual confusion in the minds of his customers in 2019 arising from use of D1’s ICE Sign and D1’s ICE Logo when he first took over the distributorship, which caused him to ask D1 to strip its branding off products supplied to him. This appears to have been direct confusion, where consumers mistook D1’s marks for those of C.206.In addition, the likelihood of confusion on the part of the public includes the likelihood of association of Killis’s use with C’s Trade Marks. I am satisfied that consumers aware of C’s ICE Logo would clearly call that mark to mind if they were presented with D1’s ICE Sign, D1’s ICE Logo and D1’s 2020 Trade Marks, as that is exactly what happened when C’s customers and contacts saw the ICE Group stand at the 2022 Interclean show. The use of D1’s 2020 Trade Marks called C’s ICE Logo to mind to the extent that they were directly confused that the stand was that of C, and went there looking to talk to Mr Bresnihan, Mr Marston and their teams. 207.For those reasons C’s claim of section 10(2) trade mark infringement by Killis is made out.s.10(3) Unfair advantage or detriment208.Both Comic Enterprises (relied on by C) and Enterprise Holdings v Europcar Group [2015] FSR 22 at [119] (relied on by the Defendants), set out nine conditions for section 10(3) infringement to be satisfied. 209.I have already found in relation to goodwill that C’s ICE Logo had a reputation in the UK by 2014 and that this was stronger by 2020. This satisfies condition (i). There is no dispute about conditions (ii), (iii) and (iv) (use of a sign by a third party within the relevant territory, the use must be in the course of trade, and it must be without the consent of the proprietor of the trade mark). As stated, I have addressed similarity of D1’s ICE Sign, D1’s ICE Logo and D1’s 2020 Trade Marks to C’s ICE Logo, and of the goods and services, which satisfies conditions (v) and (vi). 210.Condition (vii) is that it must give rise to a ‘link’ between the sign and the trade mark in the mind of the average consumer. For the reasons I have just given in respect of section 10(2) TMA infringement, I am satisfied that this condition is met.211.Condition (viii) is that it must give rise to one of three types of injury – detriment to the distinctive character or to the repute of the trade mark or unfair advantage being taken of the distinctive character or repute of the trade mark. For all the reasons which I have already explored, I am satisfied on the balance of probabilities that consumers calling a link to C’s ICE Logo to mind by use of D1’s ICE Sign, D1’s ICE Logo and D1’s 2020 Trade Marks would lessen the ability of C’s ICE Logo to distinguish C and its goods and services from those of others in the minds of members of the relevant consumers, both being detrimental to the distinctive character of the mark, or diluting it, and taking unfair advantage of C’s ICE Logo. For the same reasons as previously given, I am satisfied that there is no due cause, so condition (ix) is satisfied.212.Ms Messenger submits that to the extent that Killis has not yet used D1’s ICE Robotics and/or Cobotics marks in the UK as alleged, then the infringement claim should succeed on a quia timet basis, as by registering those marks in the UK D1 has shown a clear intention to use them, and it will do so through its exclusive distributor, Killis. I accept that submission. Those marks have already been used, inter alia out of the UK at an event which it is known that UK customers attend (Interclean 2022), and Mr Schless confirmed the ICE Group’s intention to use them in the UK in his evidence.