Intellectual Property Enterprise Court

Claim No: IP-2022-000076 - [2024] EWHC 88 (IPEC)

Fecha: 24-Ene-2024

Section 10(3) infringement

67.

In relation to the section 10(3) infringement claim, my finding on the question of similarity between the Trade Mark and the Sign will be important. The disputes which will remain for my determination if I am satisfied of similarity are:

whether the Trade Mark has a reputation in the UK;

ii)

whether Aldi’s use of the sign has taken advantage of, or is detrimental to, the distinctive character or repute of the Trade Mark.

68.

Reputation must be assessed at the date on which the alleged infringer first started to trade under the sign complained of (per Burgerista Operations GmbH v Burgista Bros Ltd [2018] E.T.M.R. 16 at [54] – [59]) which it is not disputed is the date Aldi first offered the Aldi Product for sale: 19 May 2022.

69.

If the Court is satisfied of section 10(2)(b) or section 10(3) TMA infringement, Aldi relies on a defence under section 11(2)(b) TMA. This provides:

(2)

A registered trade mark is not infringed by –

…

The use of signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,…

provided the use is in accordance with honest practices in industrial or commercial matters.