[2024] EWHC 1727 (IPEC)

As I have indicated above, the Defendants accept that, save as regards the 2D AGA Mark and the issue of reputation, their activities fell within s.10 of the Trade Mark Act 1994 and, subject to ss.11 and 12, infringed the Claimant’s Marks.

As they are not in issue, I will only deal briefly with the s.10 claims insofar as they relate to the AGA Word Marks and the AGA Badge Mark. As Mr Malynicz accepted, the Defendants have clearly used signs that are identical or similar to these Marks and have done so in relation to identical goods. Further, given the factors that led me to reject the s.12 defence, I find that such use had affected or was liable to affect one of the functions of the AGA Trade Marks (a requirement for liability under s.10(1)) (Footnote: ¹⁴) and/or gave rise to a likelihood of confusion (a requirement for liability under s.10(2)). I will deal separately with the position in relation to s.10(3).

The position regarding the 2D AGA Mark is more complicated. The mark comprised two line drawings of AGA Cookers as shown below:

The Claimant’s case is that this Mark was infringed by the Defendants’ use of images of eControl Cookers on the Defendants’ website as well as by the Defendants’ dealings with the physical eControl Cookers.

In addition to asserting that the 2D AGA Mark is invalid (see below), the Defendants deny that it has been infringed on three grounds. The first ground is that they had not used the website images of eControl Cookers or the physical cookers as signs in relation to goods – i.e. they had not used them as trade marks for the purpose of distinguishing goods (see Montres Breguet at [83]). In the case of the images on the website, I have no hesitation in rejecting this argument. An image can clearly be a sign and given that the website images were being used to advertise the Defendants’ eControl Cookers, it is clear that they were being used as signs in relation to goods. The position as regards the eControl Cookers themselves is more difficult but again, I reject the Defendants’ argument. Whilst, at first sight, it is not easy to see how something can be said to be a sign used in relation to a product when the thing said to be the sign is the product itself, in Case C-46/10 Viking Gas A/S v Kosan Gas A/S, part of the claim was in relation to a trade mark in the shape of a bottle for containing gas and the CJEU proceeded on the basis that dealings with the bottle was use in relation to goods.

The second ground on which the Defendants deny liability is that there was no or no sufficient similarity between the signs and the 2D AGA Mark. The Defendants did not expand on this argument at trial and I reject it. In my judgment, the average consumer would have seen the 2 oven versions of the eControl Cookers as identical or at least highly similar to the 2D AGA Mark and the 4 oven version (and the images of it that appear on the website) as similar.

The third ground on which the Defendants deny liability is that the 2D AGA Mark is subject to a disclaimer which reads “Registration of this mark shall give no right to the exclusive use of the device of a cooker” which they argue excludes the very monopoly themark purports to confer on the proprietor. I do not agree. In my judgment, the average consumer would understand the effect of this disclaimer to be that registration gave the proprietor an exclusive right in relation to the device of the particular cooker depicted but not in relation to the device of a cooker generally.

To show infringement of the 2D AGA Mark under s.10(1) (which probably applies in the case of sales of the 2 oven version of the eControl Cooker), it is necessary for the Claimant to show that the Defendants’ use of its signs harmed one of the trade mark functions of that mark. To show infringement under s.10(2) (which otherwise applies in respect of sales of eControl Cookers), the Claimant would have to show a likelihood of confusion. The Defendants raised no point in this regard and, for the reasons set out above when dealing with s.12, I am satisfied that there was such an effect and/or likelihood of confusion.

I find, therefore, that the Defendants’ use on its website of images of its eControl Cookers and the eControl Cookers themselves was capable of infringing the 2D AGA Mark under s.10(1) and/or s.10(2). Again, I will deal separately with the application of s.10(3)

It appears that the Claimant’s case is that the 3D AGA Mark (shown below) has been infringed in the same way that the 2D AGA Mark was infringed.