[2024] EWHC 1727 (IPEC)

On the pleadings, the Defendants’ denial of liability with regard to the 3D AGA Mark was based solely on s.12 and s.11(2). However, in their skeleton argument, they sought to deny liability on the same three grounds that they denied liability with regard to the 2D AGA Mark - including the same disclaimer argument, even though the 3D AGA Mark does not appear to be subject to that disclaimer.

As no oral submissions were made on the point and as no application to amend the Defence was made, I do not think that the Defendants can rely on these arguments as against the 3D AGA Mark. But even if they could, I would have rejected those arguments for the reasons set out in relation to the 2D AGA Mark and because there appears to be no relevant disclaimer with regard to the 3D AGA Mark.

Turning to the issues relating to s.10(3) of the Trade Marks Act 1994. As mentioned above, the only pleaded bases for the Defendants’ denial of the s.10(3) infringement claim are their s.11 and s.12 defences. No point was taken as to the assertions in paragraph 18 of the Particulars of Claim that the Defendants had used signs identical or similar to the Claimant’s Marks, without due cause and in a way that took unfair advantage of, or was detrimental to the distinctive character or repute of the Claimant’s Marks. The Defendants did, however, put the Claimant to proof of the claim that the Claimant’s Marks had an enhanced reputation and distinctive character (these being requirements for liability under s.10(3)). (Footnote: ¹⁵)

The task of showing that a mark has a reputation in the UK is not intended to be particularly onerous. The law in this regard was explained by the CJEU in Case C-375/97 General Motors Corp v Yplon SA at paras [24]-[27], cited by Arnold J in Sky plc v SkyKick UK Ltd [2018] EWHC 155at 307, as follows:

In order to establish a reputation in its Marks, the Claimant relies on the evidence of Ms Hyatt. That evidence shows extensive use in the UK of the AGA name and of badges that are very similar to the AGA Badge Mark in relation to cookers of the same or similar appearance as those depicted in the 2D and 3D AGA Marks. This evidence goes back to 1929 and there is evidence of the AGA brand being advertised in the 1930s, 1940s, 1950s and 1980s and of some £6.2m being spent on marketing and advertising over the past 5 years. Ms Hyatt also gave evidence of AGA’s booklets, brochures, newsletters and “AGA Magazine”, of its online and social media presence (including, inter alia, 67,000 Facebook followers and 55,400 Instagram followers), its sponsorships, its exhibitions at country shows, its paper advertising and the extensive national media coverage relating to its products. Finally, in addition to the numerous entities which, according to Mr McGinley provide refurbishment services for AGA Cookers, Ms Hyatt gave evidence of the Claimant having 11 retail stores, 27 retail partners, 9 distributers and 150+ authorised showrooms.

In my judgment, this evidence (which was unchallenged) clearly shows that the Claimant had and has a very considerable reputation in relation to the AGA Word Marks and, it seems to me, also in relation to the 2D and 3D AGA Marks and the AGA Badge Mark. In the circumstance, it is understandable why, in closing, Mr Malynicz did not refer to the issue of reputation.

Whilst (for the reasons I have set out above when dealing with the s.12 defence) I do not think that the Defendants’ activities were detrimental to the repute of the Claimant’s Marks, I am satisfied that those activities were detrimental to and took unfair advantage of the distinctive character of those Marks and that they were without due cause within the meaning of s.10(3).