Case No. IP-2021-000046

165.For the purposes of assessing the likelihood of confusion in the context of a validity challenge the court must attribute to C and D1 a fair and notional use of their trade marks and assess the likelihood of confusion of the relevant consumer of the goods and services in question.Global assessment of similarity of the marks166.Ms Messenger for C set out in her skeleton argument her reasons for submitting that there is a very high degree of visual, aural and conceptual similarity between both the C’s Trade Marks (C’s ICE Logo and C’s ICE Co-botics Logo) and both of D1’s 2020 Trade Marks (D1’s ICE Robotics Logo and D1’s ICE Cobotics Logo). I have already carried out an exercise in assessing overall impression conveyed to the public of C’s ICE Logo compared to D1’s ICE Logo, and the difference to the latter in relation to D1’s 2020 Trade Marks is simply the addition of the word “ROBOTICS” or “COBOTICS” as the case may be, under D1’s ICE Logo. In addition, I must also assess the overall impression of C’s ICE Co-botics Logo as against D1’s 2020 Trade Marks, and that is identical to C’s ICE Logo save for the addition of “CO-BOTICS” under C’s ICE Logo. 167.I do not consider that the relevant consumer would be different to that which I have previously described, encompassing both trade and consumers. I am satisfied that consumers use home robotics very frequently, and did in 2020. I take judicial notice from my own knowledge that robotic vacuum cleaners have been available since at least 2008 in the UK, and probably earlier, and since then robotic mops, lawnmowers and other devices have become if not ubiquitous, then very common. 168.Both C and D1 have chosen to add these words to their logos in a simple, all-capital font centralised directly under the relevant logo, sized to be subsidiary to the main “ICE” component of each design in an almost identically proportionate way. Although C has chosen a slightly more stylised and open font so that “CO-BOTICS” takes up the full width of the square element of the logo, and D1 has chosen a more closed font so that “ROBOTICS” or “COBOTICS” takes up just over a half of the width of the roundel element of the logo, the overall impression caused by each of those subsidiary words as part of the whole, is very similar because I am not satisfied that that difference would particularly be noted when these marks were called to the mind of the relevant consumer. The dominant feature of all these marks remains the word “ICE”, in my judgment, and the square background (for C’s marks) and the roundel (for D1’s marks) are also important, with an independent distinctive role, albeit not dominant. Both these elements are more distinctive than the CO-BOTICS, ROBOTICS or COBOTICS elements which are subsidiary. 169.Mr St. Ville submits that D1’s roundels are “strikingly different” to C’s square logo. I accept they are different, but when the overall impression of the marks is assessed, I do not find the differences in those elements to provide a strikingly different impression overall. In fact, the addition of the words CO-BOTICS in C’s ICE Co-botics Logo and ROBOTICS/COBOTICS in D1’s 2020 Trade Marks somewhat increase the similarity of the overall impression, as their similarity to each other and in size, proportion, style and layout serve to mask, in part, the difference in the shape of the background to the dominant feature being the word “ICE”.170.I find that the addition of the word ROBOTICS or COBOTICS makes each of D1’s ICE Robotics Logo and D1’s ICE Cobotics Logo slightly less similar visually aurally and conceptually to C’s ICE Logo than is D1’s ICE Logo, but still, in my judgment, with a high degree of similarity. D1’s ICE Cobotics Logo is, however, aurally and conceptually identical, and with a very high degree of similarity, to C’s ICE Co-botics Logo and D1’s ICE Robotics Logo has, in my judgment, a very high degree of aural and conceptual similarity and a high degree of visual similarity to C’s ICE Co-botics Logo. The distinction between COBOTICS (in D1’s mark) and CO-BOTICS (in C’s mark, with a hyphen) is of very little relevance, in my judgment, given the small size of the font and the fact that I am considering the overall impression made on the relevant consumer, who will be calling the trade marks to mind and not directly comparing them. Similarity of goods/services171.Ms Messenger has set out almost the full specification of C’s Trade Marks and D1’s 2020 Trade Marks in her skeleton argument, which I will not repeat here. Broadly speaking, the C’s services relied upon are retail, wholesale and online retail services (class 36) and rental of (class 37) machines, vehicles and equipment for industrial and domestic cleaning, polishing and vacuuming, including robotic cleaning vehicles. The specification of D1’s 2020 Trade Marks is extensive and verbose, and Ms Messenger broadly describes them in four categories: 1. machines for cleaning, polishing and vacuuming; 2. robotic machines for cleaning, polishing and vacuuming; 3. industrial robotics; and 4. construction, industrial and decoration equipment. 172.She submits that there is a very high degree of similarity between C’s services and categories 1, 2 and 3 of D1’s goods, which she describes as complementary to C’s services, the goods being indispensable for the services. I accept that submission. She further submits that both have identical consumers, identical end purposes and share trade channels, as a provider of retail and rental services is also a provider of the goods used in those services. I accept that submission as it appears to reflect the reality in the marketplace: C being both a provider of retail and rental services and a provider of goods used in those services; and D1 being a manufacturer and supplier of goods but also through its move into robotics, and as explained by Mr Schless, moving towards the provision of retail and maintenance services in relation to such goods. 173.Finally, Ms Messenger submits that the degree of similarity between C’s services and category 4 is lower, but there remains a similarity as a result of shared trade channels, for example to industry, relying on the fourth criterion identified in British Sugar PLC v James Robertson & Sons Limited (Treat) [1996] R.P.C. 281 for assessing similarity between goods and services. Category 4 includes, inter alia, metalworking machines and tools, construction machines and apparatus, loading-unloading machines and apparatus, painting machines and apparatus… Motor and engines [except for land vehicles]. 174.Mr St. Ville made no submission to address this point, so I do not know what the Defendants’ view is. I do not know whether there are shared trade channels and I do not believe there is evidence on that point before me. However, it seems to me that there is likely to be a significant overlap in the respective users of C’s services for retail and rental of machines, vehicles and equipment for industrial and domestic cleaning, polishing and vacuuming and many of the machines set out in Category 4. For example, C’s customers include supermarkets or facilities managers of supermarkets, and loading/unloading machines such as forklift trucks are very commonly used there. This is the third criterion in British Sugar. Accordingly I accept there is a lower degree of similarity with category 4.Inherent distinctiveness175.I am satisfied that C’s Trade Marks have a high degree of inherent distinctiveness. I have rejected Ds’ submission that they are somehow less distinctive because the dominant element is the word “ICE” which is a meaningful word which is also an acronym of Industrial Cleaning Equipment. I accept Ms Messenger’s submission that C’s ICE Logo has an enhanced distinctive character as a result of the use that has been made of it which has caused it to accrue substantial goodwill since 2007.176.For those reasons (the similarity between marks and goods/services, the distinctiveness of C’s Trade Marks and the enhanced distinctiveness of C’s ICE Logo) I am satisfied that there is a likelihood of direct confusion between both of C’s Trade Marks and both of D1’s 2020 Trade Marks as at 18 May 2020 when D1 filed its application for those marks. I accept Ms Messenger’s submission for C that this is supported by the response of those who emailed Mr Bresnihan and Mr Marston after the Interclean Amsterdam show in 2022, as set out previously. These are examples of actual confusion which post-date the relevant date, but are illustrative. 177.C also submits that there is also a likelihood of indirect confusion between C’s Trade Marks or either of them, and D1’s 2020 Trade Marks because: i)the strikingly distinctive common dominant element “ICE” is such that the average consumer would assume that no-one else but C would be using it in a trade mark sense in such closely related fields; and/orii)D1’s 2020 Trade Marks are of a kind that consumers would expect to find in a sub-brand or brand extension to C’s marks.178.I accept both those submissions. For those reasons, the invalidation claim for D1’s 2020 Trade Marks also succeeds pursuant to sections 47(2)(a) and 5(2) TMA.s.5(3) – Unfair advantage or detriment179.I have already found in relation to good will that C’s ICE Logo had a reputation in the UK in relation to the services for which it is registered by 18 May 2020 when D1 applied for D1’s 2020 Trade Marks. I have also addressed similarity of the D1’s marks to C’s ICE Logo. 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 2020 Trade Marks (and I have evidence that they did call that mark to mind, by the response to D1’s stand at Interclean 2022). 180.Ms Messenger for C submits that in circumstances where D1 knew of C, its presence on the UK market, its concern about its trade marks and D1’s use of the ICE sign, and that C had sought to invalidate D1’s 2015 Trade Marks, that it is a reasonable inference that D1 knew that a significant proportion of members of the public would be likely to make a connection between its marks and C’s mark, and if they did so, then some of the brand image and reputation of C would unfairly transfer to D1. I accept this submission. It seems to me that it is also of relevance both that Mr Elmore had raised concerns about confusion in relation to use of D1’s ICE Logo in October 2014 and that Mr Killi was particularly aware of this potential for linkage in the mind of consumers and for that reason had specifically warned D1 that it should seek to sell its goods in the UK with reference to its entire company name, and not the ICE sign in 2019. Both these warnings were before the date of application for D1’s 2020 Marks.181.Accordingly, for all the reasons which I have already explored, I am satisfied on the balance of probabilities that notional and fair use of D1’s 2020 Trade Marks for the goods for which they are registered would at the date of application, 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 diluting and taking unfair advantage of C’s ICE Logo.Due cause182.I must also be satisfied that D1’s 2020 Trade Marks have been applied for and used without due cause, for C to succeed in this head of claim. Mr St. Ville relies on the guidance of the CJEU in Leidseplein Beheer BV v Red Bull GmbH (C-65/12) [2014] Bus LR 280 at [53] – [60], that the court has to take into account how the signs have been accepted by the relevant public, their reputation, the degree of proximity between the respective goods and services, and the economic and commercial significance of the use for that product of the sign which was similar to the mark. 183.Of course, I have found that D1’s ICE Logo is invalid as its use could have been prevented by the law of passing off at the time that D1 started to use it in the UK. As Mr Daniel Alexander KC explains at [45] of Planetart LLC v Photobox Ltd [2020] EWHC 713, quoted by Mr Caddick KC at [111] of OATLY UK Limited v Glebe Farm Foods Limited [2021] EWHC 2189 (IPEC) which C relies on, cases in which due cause is in issue “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”.184.The Defendants submit that given D1’s lengthy use of D1’s ICE Logo in the UK, use of D1’s ICE Robotics Mark and D1’s ICE Cobotics Mark which simply add descriptive terms to an existing distinctive mark would also be with due cause.185.I am not with the Defendants. When we look at how D1’s 2020 Trade Marks have been accepted by the relevant public, upon their launch at Interclean, three trade professionals contacted C to express their concern and confusion. I can and do draw the inference that not everyone who was confused would have contacted C, and so it is likely that confusion was wider-spread. In terms of the reputation of D1’s 2020 Trade Marks, the Defendants rely on the reputation of D1’s 2015 Trade Marks. Undoubtedly those did accrue goodwill in the UK as a result of the use made of them since June 2014, but that goodwill was accrued by trade which I have found amounted to passing off of C’s ICE Sign and C’s ICE Logo. That represents a significant intrusion into C’s legitimate interests in ways which the law seeks to protect against, per Planetart. In relation to the economic and commercial significance of the use of D1’s ICE Logo, the Defendants’ arguments about the strength of this point are significantly undermined, in my judgment, by (i) Mr Killi requesting the ICE Group in China to provide him with machines stripped of the ICE Group branding, so that it could be sold by reference to the full company name; (ii) the ICE Group in China acceding to that request and supplying such machines in at least September - November 2019, on Mr Killi’s evidence; and (iii) the Defendants on Mr Schless’s own evidence discussing the possibility of adding “Intelligent” or “Intelligent Cleaning” to their product line to distinguish their products from those of C’s in the morning meeting in Las Vegas in November 2019 (and C’s case is that they went further than that). I have also made clear findings about the close degree of proximity between the specification of goods for which D1’s 2020 Trade Marks are registered and services for which C’s Trade Marks are registered. 186.Taking all of this into account, I reject the Defendants’ submissions. I am satisfied that D1 applied for, and the Defendants have used or intend to use, D1’s 2020 Trade Marks without due cause.187.For those reasons, the invalidation claim for D1’s 2020 Trade Marks also succeeds under sections 47(2)(a) and 5(3) TMA.