[2024] EWHC 3256 (IPEC)

This is judgment on liability only in a trade mark infringement claim relating to the word mark ALICE and counterclaim for revocation of that mark, following a one day trial in IPEC.

The Claimant is the proprietor of the mark in question which is UK registered Trade Mark Registration No. 3,362,772 for the word mark ALICE filed on 21 December 2018 and registered on 22 March 2019 in respect of “Apparatus for recording, transmission or reproduction of sound or images; audio apparatus; signal-mixing apparatus and instruments; sound recording and sound reproducing apparatus and instruments; signal-mixing, sound recording and sound reproducing apparatus and instruments for use in radio and television broadcasting” in Class 9 and “Repair, maintenance and refurbishment of apparatus for recording, transmission or reproduction of sound or images, audio apparatus, signal-mixing apparatus & instruments, sound recording apparatus & instruments and sound reproducing apparatus & instruments” in Class 37 (the “Alice Mark”).

As I will come to explain, the Defendants accept that the First Defendant has infringed the Alice Mark at least in the period from the commencement of its business in March 2020 until 22 March 2024, which is a date 5 years after the date of registration of the relevant mark, after which it became susceptible to revocation on the grounds of non-use. After this date the Defendants were permitted to amend their defence and counterclaim for such revocation. The Second to Fourth Defendants accept they are joint tortfeasors with the First Defendant and so jointly and severally liable with it for any infringement. However, even if revoked, such revocation will take effect only from 23 March 2024 at the earliest, and it does not affect the Defendants’ liability for prior acts of infringement before this date.

This case is therefore about whether the Alice Mark was put to genuine use in the first five years of its revocation, and so whether it is liable to revocation in whole or in part.

The Claimant was represented by Dr David Ivison and the Defendants by Mr Aaron Wood. I am grateful to them for their written and oral submissions.

The Claimant is a company incorporated in England and Wales on 15 November 2016 with the company number 10479545. It is a business which designs and manufacturers a range of electronic equipment. There is a dispute about whether that is audiovisual equipment or audio equipment, which goes to the question of whether there has been genuine use of the Alice Mark across the scope of the specifications.

The First Defendant is a company incorporated on 12 June 2019 in England and Wales with the company number 12046009.

The First Defendant has carried on a business offering, advertising and selling a still and video camera for capturing still images and video in the United Kingdom (“Alice Camera”) under and by reference to the signs “ALICE CAMERA” (“AliceCamera Sign”) and “ALICE” (“Alice Sign”) (together, the “First Defendant’s Signs”). This is a digital camera which attaches to a smartphone.

The other defendants are directors of the First Defendant and each hold 33% of the issued share capital of the First Defendant. They all describe themselves as co-founders of the First Defendant.

The Claimant alleges, and the Defendants admit save as noted otherwise, that:

The Defendants admit that the First Defendant’s cameras have the Alice Sign affixed to them and that the packaging of the cameras also has the Alice Sign and/or the Alice Camera Sign affixed to it. They plead that they have written in open correspondence to the Claimant’s representatives before the claim was issued to indicate that following receipt of the complaint they intend:

As noted, the Claimant pleads and the Defendants accept at paragraph 6 of the Amended Defence and Counterclaim subject to their counterclaim, that by affixing the Alice Sign to cameras or their packaging; offering or exposing the cameras for sale under the Alice Sign; exporting cameras under the Alice Sign or using the Alice Sign on business papers and in advertising, the First Defendant has infringed the Alice Mark contrary to section 10(1) of the Trade Marks Act 1994 (“TMA”). They further admit at paragraph 7 of the Amended Defence and Counterclaim that by those acts complained of, the First Defendant has infringed section 10(2) TMA.

The Claimant pleads, and the Defendants accept, that the Alice Camera Sign consists of two parts “ALICE” and “CAMERA”, of which “ALICE is the dominant and distinctive part and “CAMERA” is purely descriptive when used in relation to a camera. It further accepts that the Alice Camera Sign has been used in relation to cameras, which are goods identical to the Class 9 “apparatus for recording transmission or reproduction of… images” in respect of which the Alice Mark is registered. It denies that the First Defendant’s use of the Alice Camera Sign in the same ways as set out in paragraph [[12]] above infringes the Alice Mark contrary to section 10(1) TMA as it denies that the Alice Camera Sign is identical to the Alice Mark. It further denies that such use of the Alice Camera Sign infringes the Alice Mark contrary to section 10(2) TMA.

In its initial Defence filed on 24 October 2023, the Defendants advanced a bad faith attack on the validity of the Alice Mark. That was struck out by HHJ Hacon on 13 June 2024, and he allowed the Defendants to serve an amended Defence and Counterclaim.

The Claimant seeks, inter alia, a declaration of infringement of the Alice Mark; injunctive relief; an order for delivery up alternatively destruction of all articles which would breach the injunction; and damages or alternatively at its election an account of profits arising from the trade mark infringement.

The Defendants accept that if and to the extent that the Claimant’s claim succeeds, the Claimant is entitled, inter alia, to an order that the acts complained of infringed; to an injunction to prevent the recommencement of such acts; and an order for delivery up or destruction. They do not admit that the Claimant has suffered loss and damage by reason of the First Defendant’s acts of infringement. However, their denial of the Claimant’s assertion that they threaten and intend to continue the acts complained of unless restrained by the Court cannot survive the admissions made by the Third Defendant that they do.

The Defendants applied to the UKIPO for revocation of the Alice Mark in April 2024 (cancellation number CA000507189), i.e. after the claim had been issued and proceedings were on foot in IPEC, pursuant to sections 46(1)(a) and 46(1)(b) TMA on the basis that it had not been the subject of genuine use in either class 9, where infringement had been alleged by the Claimant, and in class 37, where it had not. That was dismissed by the IPO, with costs, pursuant to s46(4)(a) TMA which provides that where proceedings concerning the trade mark in question are pending in the court, the application for revocation must be made to the court, and not the registrar.

The Defendants were permitted to file an Amended Defence and Counterclaim in which they seek a declaration that the Alice Mark is invalid in its entirety (or, alternatively, in respect of “Apparatus for recording, transmission or reproduction of sound or images”) and is revoked with effect from the earliest of:

The Claimant in its Amended Reply and Defence to Counterclaim pleads that it has put the Alice Mark to genuine use in respect of the goods and services of its specification in the period covered by the Defendants’ counterclaim for revocation. It denies that the Alice Mark is liable to be revoked as alleged in the Counterclaim, but pleads that if it were, the Claimant would seek to amend the specification pursuant to section 46(5) TMA, and will rely on such amended specification if and to the extent necessary, in respect of its claims of trade mark infringement.

The list of issues is set out in the Schedule to the case management order of His Honour Judge Hacon dated 12 June 2024:

The Claimant relies on the evidence of Paul Andersson, its managing director. He signed the Amended Particulars of Claim and Amended Reply and Defence to Counterclaim, which stand as evidence in IPEC, gave a witness statement dated 22 July 2024, a short additional witness statement dated 23 October 2024 clarifying one aspect of his earlier witness statement, attended court and was cross-examined and re-examined. I found Mr Andersson to be a good witness, straightforward and honest and Mr Wood confirmed for the Defendants in closing that he had no criticism to make of him.