Intellectual Property Enterprise Court

Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)

Fecha: 19-Jun-2024

Infringement

Infringement

37.

S.10 TMA provides:

(1)

A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2)

A person infringes a registered trade mark if he uses in the course of trade a sign where because –

The sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

The sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3)

A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which –

Is identical with or similar to the trade mark,

....

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes advantage of or is detrimental to the distinctive character or the repute of the trade mark.

(3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.

…

(4)

For the purposes of this section a person uses a sign if, in particular, he

Affixes it to goods or the packaging thereof;

Offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;

Imports or exports goods under the sign; or

Uses the sign as a trade or company name or part of a trade or company name;

Uses the sign on business papers and in advertising; or

Uses the sign in comparative advertising in a manner that is contrary to the Business Protection from Misleading Marketing Regulations 2008.

38.

Regulation 4 of the 2008 Regulations provides:

Comparative advertising

Comparative advertising shall, as far as the comparison is concerned, be permitted only when the following conditions are met—

(a)

it is not misleading under regulation 3;

(b)

it is not a misleading action under regulation 5 of the Consumer Protection from Unfair Trading Regulations 2008 or a misleading omission under regulation 6 of those Regulations;

(c)

it compares products meeting the same needs or intended for the same purpose;

(d)

it objectively compares one or more material, relevant, verifiable and representative features of those products, which may include price;

(e)

it does not create confusion among traders—

(i)

between the advertiser and a competitor, or

(ii)

between the trade marks, trade names, other distinguishing marks or products of the advertiser and those of a competitor;

(f)

it does not discredit or denigrate the trade marks, trade names, other distinguishing marks, products, activities, or circumstances of a competitor;

(g)

for products with designation of origin, it relates in each case to products with the same designation;

(h)

it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products;

(i)

it does not present products as imitations or replicas of products bearing a protected trade mark or trade name.

39.

I will consider the law in this area in more detail in my discussion of the issues.