[2024] EWHC 1727 (IPEC)

The other defence relied on by the Defendants is s.11(2) of the Trade Marks Act 1994 which, so far as relevant, provides that:

The Defendants say that this applies to the claim in respect of the AGA Word Marks because “AGA” was used to explain the purpose of their products – to indicate that the eControl System could be used to convert AGA Cookers.

In my judgment, the Defendants’ use of the word AGA on its website and invoices does not fall within s.11(2). Such use was not descriptive use and the implication in phrases such as “eControl AGA”, “AGA Cooker eControl” or “Controllable Aga Cookers” was not that the Defendants’ own eControl System could be fitted to an AGA Cooker. Rather it was distinctive use; use as part of a badge of origin. It was use that suggested that the eControl Cookers and the eControl System were associated with the Claimant as the proprietor of the AGA Word Marks. Further, to the extent that the word “AGA” was being used to identify the goods being sold as those of the proprietor, such use was not in accordance with honest practices because the goods in question had been significantly altered by the fitting of an eControl System which had nothing to do with the proprietor. Accordingly, in my judgment, neither s.11(2)(b) nor (c) applies.

I should note that s.11 was only very lightly touched on in the Defendants’ skeleton argument and was not mentioned at all in their closing submissions.