Intellectual Property Enterprise Court

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

Fecha: 19-Jun-2024

THE ISSUES

THE ISSUES

26.

HHJ Hacon, by a case management order dated 23 November 2023, ordered a split trial of liability and quantum, made directions, and set out in the schedule to the order a list of issues for determination at the liability trial as follows (amended to use the defined terms used in this judgment):

Are the Marks inherently distinctive and/or have they acquired an enhanced distinctive character in the UK by reason of the Claimant’s use of them in the course of trade?

Do the Marks enjoy a reputation in the UK?

Would the Marks be viewed by the average consumer as a family of marks by reason of their common component “Builder” and/or by reason of the Claimant’s use of the Marks in the course of trade?

Have the Defendants (or either of them) used in the course of trade a sign which is identical or similar to the Marks (or any of them)?

Category 1 alleged infringement

Has the Defendants’ alleged use of any of the signs identified in paragraphs 11.1 – 11.3 of the APOC, given rise to a likelihood of confusion with the Marks contrary to s.10(2) TMA?

Has the Defendants’ alleged use of any of the signs identified in paragraphs 11.1 – 11.3 of the APOC infringed the Marks contrary to s.10(3) TMA?

Have the Defendants (or either of them) used any of the signs identified in paragraphs 11.1 – 11.3 of the APOC with due cause?

Category 2 alleged infringement

Was the LinkedIn Post targeted at consumers in the UK?

Does the LinkedIn Post constitute comparative advertising?

10.

Did the LinkedIn Post contravene regulation 4 of the Business Protection from Misleading Marketing Regulations 2008/1276 and/or infringe s.10(3) TMA for the reasons identified in paragraph 19.4-6 of the APOC?

11.

Has the Defendants’ alleged use of any of the signs identified in paragraph 18 of the APOC taken unfair advantage of or caused detriment to the distinctive character or repute of the Marks?

Defence under s.11(2)(b) and (c) TMA

12.

Does the Defendants' alleged use of any of the signs complained of constitute:

The use of a sign or indication which is non-distinctive or which concerns 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 pursuant to s.11(2)(b) TMA;

The use of a trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark pursuant to s.11(2)(c) TMA?

13.

Was the Defendants’ alleged use of any of the signs complained of in accordance with honest and commercial practices?

Joint Tortfeasorship

14.

Is D1 liable with D2 as a joint tortfeasor on the basis of a common design?

Defendants’ counterclaim

15.

Are any of the Marks devoid of inherent distinctive character?

16.

Have any of the Marks acquired distinctive character through use?