Case No. IP-2021-000046

188.As I have found that D1’s 2020 Trade Marks are invalid pursuant to section 5(2) and 5(3) TMA, I do not need to go on to determine this point. However, in case I am wrong on invalidity, I will deal with it.Goodwill189.I found that C had accrued a substantial and actionable goodwill in C’s ICE Logo by June 2014. I am satisfied that since that date, D has carried out further substantial trade which accrued further substantial goodwill to C’s ICE Sign and C’s ICE Logo, including in relation to the very successful launch in March 2017 of C’s On Demand machines, the sale and rental and maintenance of which by 2020 made up the majority of C’s business. Accordingly I am satisfied that by 18 May 2020 the goodwill or reputation in C’s ICE Logo was commensurately stronger.Misrepresentation190.I have also found a high or very high degree of similarity between C’s ICE Logo and D1’s 2020 Trade Marks, and I am satisfied there is a very high degree of similarity between the goods and services for which C accrued goodwill under and by reference to those marks, such that I am satisfied that a substantial number of C’s customers or potential customers would be deceived into thinking D1’s goods were those of C, or a connected undertaking. It would be difficult for the Defendants to argue otherwise, given that they submit (albeit in relation to their attack on the validity of C’s Trade Marks) that there is bound to be a likelihood of confusion between C‘s ICE Logo and C’s ICE Co-botics Logo on the one hand and D1’s Word Mark on the other. 191.This is particularly so given Mr Killi’s evidence that the very first trade stand he populated with the ICE Group machines after taking over as exclusive UK distributor of ICE Group products in 2019 caused such confusion with some customers who attended the stand that he immediately contacted the ICE Group to say that he did not think he should sell those products under the sign ICE, and asked for them to be relabelled as Intelligent Cleaning Equipment instead. That is actual confusion and I am concerned with notional fair use, but that example of actual confusion informs my view of the likely effect on potential customers of notional fair use of D1’s 2020 Trade Marks which are very similar to D1’s ICE Logo. I do not consider that the addition of “”COBOTICS” and “ROBOTICS” to D1’s ICE Logo would be likely to make any significant difference to that likely deception. Damage192.In terms of damage, I am satisfied that the likely deception would have a real effect on C’s trade and damage C’s goodwill. As Ms Messenger submits, it is well established that when misrepresentation and goodwill is proved, the likelihood of damage flows from that. Mr St. Ville submits that there is no evidence of actual damage, but once again, I am considering notional fair use at the relevant date. 193.Ms Messenger reminds me that Killis was only appointed in 2019, its first trade show showcasing ICE Group products caused Mr Killi concern as I have set out so that products were sent to the UK from China with the branding stripped off in September, October and November 2019 (and C noticed that in the marketplace), and by early 2020 everything shut down as a result of the Covid-19 pandemic. Mr Killi’s witness statement shows that Killis bought c. £354,000 of ICE Group products in 2019 and c. £3,516 in 2020, an almost total cessation of that business. It is not until 2021 that he began purchasing again and fully branded ICE Group products returned to the UK. Conclusion on Ss 47(2)(b) and 5(4)(a) TMA194.For all those reasons, C has satisfied me of its case of invalidity of D1’s 2020 Trade Marks under sections 47(2) and 5(4)(a) TMA, as I am satisfied that across the full specification, they are liable to be prevented by virtue of the law of passing off.