Intellectual Property Enterprise Court

[2024] EWHC 1727 (IPEC)

Fecha: 08-Jul-2024

The trade mark claims

The trade mark claims

11.

The Claimant’s principal claims were that the Defendants’ activities outlined above had infringed the following trade marks registered in its name:

Trade Mark	Filing date	Number	Services relied on
AGA	11 June 1931	523495	For, inter alia, “cooking apparatus” in class 11
AGA	14 July 1933	543075	For, inter alia, “oil or gas stove burners, all being made of metal or predominantly of metal” in class 11
AGA	14 March 2008	2425088	For, inter alia, “ovens, hobs, cookers, cooking ranges, stoves” in class 11
	21 June 2006	2425089	For, inter alia “ovens; hobs; cookers; cooking ranges; stoves” in class 11
	17 July 1990	1433271	For “Apparatus and instruments for cooking and heating; parts and fittings for all the aforesaid goods; all included in class 11”
	28 February 2015	3044627	For “Cooking, baking, warming, thawing and heating apparatus, installations and appliances namely range cookers, heat storage stoves and cookers, cast iron stoves and cookers; parts and fittings for all the aforesaid goods” in class 11

12.

I will refer to these marks collectively as “the Claimant’s Marks”, to the first three marks as “the AGA Word Marks”, to the fourth mark as “the AGA Badge Mark”, to the fifth mark as “the 2D AGA Mark” and to the sixth mark as “the 3D AGA Mark”.

13.

The Claimant’s case is that the way in which the Defendants had marketed and sold the eControl Cookers infringed the Claimant’s Marks because it had involved:

(a)

Use in the course of trade of signs identical to the registered marks in relation to identical goods – an infringement under s.10(1) of the Trade Marks Act 1994; and/or

(b)

Use in the course of trade of signs identical or similar to the registered marks in relation to goods which are identical or similar to the goods for which the marks are registered and where there exists a likelihood of confusion on the part of the public - an infringement under s.10(2) of the Trade Marks Act 1994; and/or

(c)

Use in the course of trade, in relation to goods, of a sign which is identical with or similar to the registered marks where those marks have a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of those marks – an infringement under s.10(3) of the Trade Marks Act 1994.

14.

In their Defence, the Defendants put the Claimant to proof of the reputation and distinctive character of the Claimant’s Marks and they denied infringement. The pleaded basis of that denial was that:

(a)

As regards each of the Claimant’s Marks, they have a defence under s.12 of the Trade Marks Act 1994 (the exhaustion of rights defence) because the eControl Cookers were AGA Cookers which had previously been placed on the market by the Claimant or with its consent;

(b)

As regards the AGA Word Marks, they have defences under s.11(2)(b) and/or s.11(2)(c) of the Trade Marks Act 1994 because their use of the word “AGA” had been descriptive and/or to indicate that the eControl System could be used to “convert” genuine AGA Cookers;

(c)

In relation to the 2D AGA Mark, there could be no infringement under s.10 of the Trade Marks Act 1994 because:

an image showing an eControl Cooker and/or the appearance of such a cooker is not “a sign”, does not distinguish or indicate the origin of goods and is not being used in relation to goods;

ii.

there was no sufficient similarity between the image or appearance of the eControl Cookers and the 2D AGA Mark; and

iii.

liability was excluded by the terms of the disclaimer to which the 2D AGA Mark is subject; and

(d)

In relation to the 2D AGA Mark and the 3D AGA Mark, those Marks are invalid.

15.

Accordingly, save as regards the 2D AGA Mark and the non-admission of reputation and distinctive character, the Defence did not deny that the Defendants’ actions fell within s.10(1), (2) or (3) of the Trade Marks Act 1994 in respect of each of the Claimant’s Marks. Their skeleton argument adopted the same approach. So too, in closing, did Mr Malynicz. On being asked whether he accepted that there were, in principle, claims under s.10(1), s.10(2) and s.10(3), his response was that:

“MR. MALYNICZ: I must -- 10(3), no, because you have to show that extra damage, detriment and so on. There is a 10(1) claim and that is the end of it. Of course the mark is used on the goods, so it is the end of the matter. There is nothing in my skeleton about these things because they just do not matter at all. What matters is the starting point. Which is the rights are exhausted and as a matter of approach the burden is on the claimant to establish a claim for legitimate reasons to oppose, where it has already realised the economic value of the goods.”

16.

As regards s.10(3), Mr Malynicz said that there was no infringement because “[t]here is no unfair advantage, there is no dilution and there is no tarnishment”. This had not been pleaded but, as he pointed out, issues such as dilution and tarnishment are also relevant to the s.12 (exhaustion) defence and, on that basis, he was not going to make any submissions as to whether the case fell within s.10(3). (Footnote: ²) Much the same can be said as regards the s.10(1) and s.10(2) claims as the issues whether the Defendants’ activities affected the origin function of the trade marks or gave rise to a likelihood of confusion, issues which arise in relation to those claims, are also relevant to the s.12 defence (see below). Essentially, the Defendants’ position was a pragmatic one and was, with the exception of the 2D AGA Mark, to focus on the s.12 defence rather than on the various conditions needed to show infringement under s.10(1), s.10(2) or s.10(3). I will adopt the same approach.

17.

I should mention that it appears to have been common ground that the average consumer (the hypothetical person through whose eyes various trade mark issues are assessed) is an ordinary member of the public, perhaps someone who already owns an oil or gas AGA Cooker and who is interested in electric conversion, or is considering purchasing one. Given the relatively high prices charged for new AGA Cookers and for the eControl Cookers, I think that such a person would display a reasonably high degree of attention. It also appears to be common ground that the relevant date for determining the trade mark issues that arise is October 2021, when the Defendants started marketing and selling the eControl Cookers, and that, as a result, the law to be applied has not been affected by the UK’s withdrawal from the European Union.