Trade Marks - Automobile Club de L'Ouest v Omologato

By Mike Roberts from London, United Kingdom - IMG_0419
CC BY-SA 2.0, https://commons.wikimedia.org/w/index.php?curid=2307324

 

Jane Lambert

Intellectual Property Enterprise Court (Mr David Stone) Automobile Club de L'Ouest (ACO) v Omologato Ltd and Another [2026] EWHC 2265 (IPEC) (27 July 2026)

This was an action for trade mark infringement.  There was also a claim for passing off, but that cause of action was not relied upon in the end.  The claimant, Automobile Club de L'Ouest ("ACO"), operates the 24-hour Le Mans endurance race.  The first defendant, Omologato Limited (Omologato), designs, markets and sells watches with a motor racing theme.   ACO objected to watches that had been supplied by Omologato bearing the signs "LE MANS", "LM" and "LMR." 

Claim against Mr Kalra

The second defendant was Shami Kalra ("Mr Kalra"), a director of Omologato.  Mr Kalra also registered the letters LMR as a trade mark for watches and other goods in class 14 under trade mark number UK 00004073400.  ACO sought a declaration that the mark was invalid under s.47 (2) of the Trade Marks Act 1994.

Claimant's Trade Marks

ACO is the registered proprietor of the following marks:

• WO 0000001681529;
• UK 00003578709; and
• WO 0000001763453,

Defendants' Use of the Marks

Omologato placed the signs "Le Mans", "LM" and "LMR" on the faces of their watches and used those signs as product names.   For example, the words "Le Mans '59 Watch" appeared on the watch itself, on its packaging and in its advertising.  The words "Le Mans" also formed part of the URL of the web page on which Omologato marketed that watch. It was also used as a hashtag in mentions of the product on social media.

Causes of Action

The claimant argued that the use mentioned above had infringed their marks under s.10 (1), (2) and (3) of the Trade Marks Act 1994.

Issues

At a case management conference held on 23 Oct 2025,  His Honour Judge Hacon ordered the following issues to be tried:

"1. Whether the signs used by the First Defendant and the Second Defendant's Mark are identical or similar to the Claimant's Marks.
2. Whether the goods in relation to which the First Defendant has used the signs complained of and for which the Second Defendant's Mark is registered are identical or similar to the goods or services for which the Claimant's Marks are registered.
3. Whether there exists a likelihood of confusion on the part of the public between the signs used by the Defendants and the Second Defendant's Mark and the Claimant's Marks.
4. Whether the Claimant's Marks have a reputation in the UK.
5. Whether the use of the signs complained of and the Second Defendant's Mark give rise to a link in the mind of consumers with the Claimant's Mark.
6. Whether use of the signs complained of and the Second Defendant's Mark has taken unfair advantage of the distinctive character or repute of the Claimant's Marks.
7. Whether use of the signs complained of and the Second Defendant's Mark has caused detriment to the distinctive character and/or repute of the Claimant's Marks.

Liability of the Second Defendant

13. Whether the Second Defendant is jointly and severally liable for the First Defendant's acts of trade mark infringement and/or passing off."

The Trial

The action came on for trial before Mr David Stone, sitting as a deputy High Court Judge on 27 July 2026.  He delivered judgment in Automobile Club de L'Ouest (ACO) v Omologato Ltd and another [2026] EWHC 2265 (IPEC) on 27 July 2026.

Average Consumer

The deputy judge directed himself at para [23] of his judgment that the "average consumer" was of watches, who would pay slightly more attention to the purchase of a watch and while some watches were very expensive, there were others that were not.

He also observed:

"[24] For infringement under section 10 (1) of the Act, the claimant must establish six conditions: (i) there must be use of a sign by a third-party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services identical with those for which the trade mark is registered; and (vi) it must affect or be liable to affect one of the functions of the trade mark: Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403 at [67] per Kitchin LJ (as he then was).
[25] For section 10 (2) infringement, the claimant must establish six conditions: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is at least similar to the mark; (v) it must be in relation to goods or services which are at least similar to those for which the mark is registered; and (vi) it must give rise to a likelihood of confusion: Shorts International v Google [2026] EWCA Civ 668 at [21].
.................................
[27] In relation to section 10 (3) infringement, the claimant must establish nine conditions: (i) the trade mark must have a reputation in the UK; (ii) there must be use of a sign by a third-party within the UK; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is identical or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury: (a) unfair advantage being taken of the distinctive character or repute of the trade mark, (b) detriment to the distinctive character of the trade mark (dilution), or (c) detriment to the repute of the trade mark (tarnishment); and (ix) it must be without due cause: Thatchers v Aldi [2025] EWCA Civ 5 at [38]."

S.10 (1) Infringement

The learned deputy judge noted at para [35] of his judgment that s.10 (1) of the Act applies where the mark and sign are identical and the registered goods/services are identical to the goods/services on which the allegedly infringing sign is being used. He therefore had to consider the first and second issues that Judge Hacon had ordered to be tried at the case management conference of 23 Oct 2025 together to determine whether Omologato was liable under that section.  He observed that infringement was alleged only in relation to the sign "LM " as used by Omologato in relation to its watches. Infringement was alleged of WO 0000001681529 for the letters "LM" registered with respect to watches in class 14.  

He found that the defendants had not pleaded a clear basis for resisting s.10 (1) infringement and could not think of a basis on which they might do so. The LM sign was clearly being used by Omologato as an indication of origin for its watches within the UK. That use was in the course of trade. It was without ACO's consent. LM and LM were clearly identical. Omologato's use was for watches which were identical to the goods for which ACO's mark was registered. Omologato's use was also liable to affect the functions of the trade mark, including, for example, by causing confusion. He therefore held that s.10 (1) infringement was made out.

S.10 (2) Infringement

This exercise involved consideration of the first three issues that Judge Hacon had ordered to be tried on 23 Oct 2025.  

- UK 00003578709 and WO 0000001763453 by Omologato's Use of the Sign "Le Mans"

Infringement of both marks was alleged by Omologato's use of the sign LE MANS in relation to watches. Mr Stone noted that Omologato's use included use in the name of watches, in the URLs for the pages promoting Omologato's watches, and in phrases such as "our Le Mans Chronograph". The sign LE MANS used by Omologato was very similar to UK 00003578709.  When used in relation to watches, its use was with respect to identical goods. Given the high similarity of the mark/sign and the identity of the goods, there was a likelihood of confusion. The likelihood of confusion was increased by the enhanced distinctiveness that the mark had acquired through use. UK trade mark 3578709 was therefore infringed.

In WO 0000001763453, the dominant and distinctive component was "LE MANS" although "24H" might be pronounced as "24 hours". "24 hours" was of limited, if any, distinctive character for watches. Consumers who know of the 24-hour race at Le Mans might realise that the "24H" referred to the race.   Those who did not would, when used in relation to watches, consider it as having something to do with the 24 hours in the day. WO 0000001763453 was, therefore, highly similar visually, aurally and conceptually to Omologato's uses of Le Mans in relation to watches. There was therefore a likelihood of confusion.

-UK 00003578709 and WO 0000001763453 by Omologato's Use of the Signs "LM" and "LMR"

In the learned deputy judge's judgment, each of the signs "LM" and "LMR" was not sufficiently similar to either UK 00003578709 or WO 0000001763453 to create a likelihood of confusion even when used in relation to watches which were identical goods.

- Infringement of WO 0000001681529 by Omologato's Use of the Sign "LMR"

In terms of the similarity of signs, "LM" and "LMR" were similar in the learned deputy judge's view.  He added that although "LM" was only a two-letter mark and the addition of the "R" was a further 50% of the original letters, "LM" appeared wholly within "LMR".  Moreover, reasonably circumspect consumers paid greater attention to the start of a trade mark. The signs were therefore similar to at least a medium degree.  The goods were identical.

Referring to para [40] of the Supreme Court's judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and Another [2025] Bus LR 1391, [2025] WLR(D) 337, [2025] UKSC which cited para [87] of Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] FSR 19, [2012] EWCA Civ 24, [2012] ETMR 17., Mr Stone stated at para [45] of his judgment that context is relevant when assessing the likelihood of confusion. In this case, Omologato used "LMR" in the context of uses of "Le Mans" and other indicia of the race such that the likelihood of confusion with "LM" increased. Mr Stone thought that consumers would in context understand that "LMR" referred to the "Le Mans Race". This was exacerbated on the facts because Omologato introduced "LMR" to replace its uses of "LM." There was no clear evidence of the length of time that Omologato was using both "LM" and "LMR" in relation to watches, but it did appear that the uses overlapped. In Mr Stone's judgment, there was, therefore, a likelihood of confusion: at least a significant proportion of consumers would think that Omologato's "LMR" brand was in common ownership with or licensed by the owner of the "LM" brand, given the context of uses alongside "Le Mans" and images of racing.

S.10 (3) Infringement

ACO's s.10 (3) claim concerned only UK 00003578709.   The deputy judge noted at [47] that no claim was made to reputation in respect of WO 0000001681529 or WO 0000001763453. To consider this cause of action, Mr Stone had to consider the 4th, 5th, 6th and 7th issues that Judge Hacon had ordered to be tried.

Starting with the fourth issue, Mr Stone directed himself that the test for reputation was whether "the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark", citing para [81] of Shorts International. Referring to para [83] of Shorts International, he noted that this was "not a particularly onerous requirement". In his view, the mark was clearly known by a significant part of the public concerned for the services covered by the mark, at least in relation to "entertainment in the nature of motor racing" included among the services for which it is registered.   He relied on the following facts:

"i) The Le Mans race has been a prominent fixture of the global motor racing calendar for over 100 years;
ii) The Le Mans race is popular with UK consumers - approximately a third of international spectators at the race are from the UK;
iii) UK fans can purchase tickets via a section of ACO's website that is specifically directed to UK consumers;
iv) The Le Mans race is available in the UK on a major sports channel and streaming services - it is estimated to have been available to 4 million UK viewers in 2024;
v) UK drivers have had particular success in the race, winning it more times than any other nationality. Wins by UK drivers are widely reported in the UK press; and
vi) There was significant additional coverage of the race in 2023, the centenary year."

There was significantly more evidence which the judge did not need to set out in his judgment.  Finally,
he rejected the defendants' submission that ACO had no customers and/or a physical presence in the UK

As for the fifth issue, Mr Stone had no difficulty in finding that consumers would create a link between Omologato's uses of "Le Mans" and the mark. 

Concerning the sixth,  he had no doubt that Omologato would attain an advantage.  The only real questions were whether that advantage was unfair and whether Omologato could demonstrate due cause.  In Mr Stone's judgment, this was a classic case of unfair free riding. On the evidence before him, Omologato had set out to take advantage of the prestige of the Le Mans race and had used the sign "Le Mans" (and variants thereof), aurally identical and visually and conceptually very similar to the mark to bolster sales of its own watches. Omologato's subjective intention was quite clear, and the court would not bend over backwards to say that that intention had not been achieved.

In response, Omologato said that it was entitled to use the "Le Mans" sign because (a) it had sponsored teams and drivers for ACO's races and (b) ACO did not complain early enough of Omologato's use. In Mr Stone's judgment, neither of those pleaded allegations had been made out on Omologato's evidence, even if they were to work in legal terms. Those allegations had been merely asserted, not proved.   The Court would have expected to see the agreement or agreements showing the appropriate chain of permission from ACO to the sponsored team or teams and then on to Omologato. No such agreements had been provided. In relation to Omologato's second point, even if this were to be a question of law, it did not apply on the facts. It was clear from the correspondence that ACO objected to Omologato's use early and often.

S.10 (6) Defence

The Defendants relied on the registration of Mr Kalra's trade mark as providing a defence to infringement under s. 10 (6) of the Act as originally enacted.  That provision was repealed by reg 10 (7) of The Trade Marks Regulations 2018 (SI 2018 No 825).  The defence therefore failed.

S.11 (2) (c) Defence

S.11 (2) (c) of the Trade Marks Act 1994 provides:

"A registered trade mark is not infringed by:
...
(c) the use of the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial matters."

Lord Justice Kitchin explained in Maier v Asos [2015] ETMR 26, [2015] FSR 20, [2016] Bus LR 1063, [2015] EWCA Civ 220 that the requirement for "honest practices in industrial or commercial matters" meant "a duty to act fairly in relation to the legitimate interests of the trade mark proprietor" at para [148];

"In considering whether a defendant is acting fairly in relation to the legitimate interests of the trade mark proprietor it will be relevant to consider, among other things, whether there exists a likelihood of confusion; whether the trade mark has a reputation; whether use of the sign complained of takes advantage of or is detrimental to the distinctive character or repute of the trade mark; and whether the possibility of conflict was something of which the defendant was or ought to have been aware. The national court must carry out an overall assessment of all the circumstances and determine whether the defendant is competing unfairly."

Mr Stone considered whether Omologato's use of ACO's trade marks was in accordance with honest practices.   In his view, it was not.   He described it as "a classic case of ambush marketing," where a non-sponsoring trader sought to get an advantage in trade through association with a sports event.  For reasons he had already given, the advantage gained by Omologato was unfair and without due cause. Therefore, in his judgment, the s.11 (2) (c) defence failed.

Personal Liability of Mr Kalra

The last of the issues that Judge Hacon ordered to be tried was whether Mr Kalra was jointly and severally liable for Omologato's acts of trade mark infringement and/or passing off.  Mr Kalra argued that he was not a joint tortfeasor and that he should not have been joined to the action in the first place.

On the joint liability point, Mr Stone quoted paras [135] to [138] of Lord Leggatt's judgment in Lifestyle Equities v Ahmed  [2024] 2 WLR 1297, [2024] RPC 14, [2024] ETMR 32, [2024] Bus LR 1438, [2025] AC 1, [2024] WLR(D) 233, [2024] UKSC 17:

"[135] To summarise, there is a general principle of the common law that a person who knowingly procures another person to commit an actionable wrong will be jointly liable with that other person for the wrong committed. The liability of the procurer is an accessory liability. Where the primary wrong is a breach of contract, this accessory liability takes the form of a distinct tort. Where the primary wrong is a tort, however, there is no need to posit a separate tort of procuring another person to commit a tort. Where the general principle applies, the procurer is made jointly liable for the tort committed by the primary wrongdoer.
[136] There is a further, distinct principle of accessory liability by which a person who assists another to commit a tort is made jointly liable for the tort committed by that person if the assistance is more than trivial and is given pursuant to a common design between the parties. On the facts of a particular case both principles may be engaged. But on the present state of the law assistance which falls short of procuring the primary wrongdoer to commit the tort cannot lead to liability unless it is given pursuant to a common design.
[137] Although procuring a tort and assisting another to commit a tort pursuant to a common design are distinct bases for imposing accessory liability, they must operate consistently with each other and such that the law of accessory liability in tort is coherent. Considerations of principle, authority and analogy with principles of accessory liability in other areas of private law all support the conclusion that knowledge of the essential features of the tort is necessary to justify imposing joint liability on someone who has not actually committed the tort. This is so even where, as in the case of infringement of intellectual property rights, the tort does not itself require such knowledge. As Paul Davies says in his excellent book on Accessory Liability (2015) p 211: "Strict liability might suffice for the primary tort but should not be sufficient for accessory liability."

Application to this case.

[138] In a simple case where, for example, a company offers for sale counterfeit goods, it may be obvious that a director who arranged for the manufacture and sale of the goods must have known the facts which made the company's acts infringements of the claimant's trade mark. But the present case is not of this kind. The Santa Monica Polo Club signs used by Hornby Street were different in various ways from Lifestyle's registered trade marks and there was room for argument and honest difference of opinion about t7 )2he extent of the similarity and whether it gave rise to a likelihood of confusion or otherwise resulted in infringement."

The facts of the case before Mr Stone were very different. It was common ground that Mr Kalra was the controlling mind of Omologato. He designed and named the watches. He wrote or approved the advertising copy used on Omologato's website and social media posts. He received and responded to ACO's pre-action correspondence. He requested a licence from ACO on behalf of Omologato. He directed the litigation. He personally owned the "LMR" mark on which Omologato relies to absolve itself of infringement.  In Mr Stone's judgment, Mr Kalra had actual knowledge of all the essential facts relied on by ACO in support of its claims for trade mark infringement. This was not a case where views might have differed on the interpretation of the marks in issue as was the case before Lord Leggatt. Here, ACO's position has been clear for many years and known to Mr Kalra.

Mr Kalra tried to argue that the principle of limited liability protects directors from personal liability for the actions of the company and that "any action taken by the second defendant is performed as an agent of the company." Mr Stone observed at para [62] that that was no answer to an allegation of joint tortfeasance. It was clear to him from the history of this matter that Mr Kalra had been aware of what he was doing.   He was aware of ACO's trade marks and the need not to infringe them. He found that Mr Kalra was jointly liable with Omologato for the acts of trade mark infringement.

On the second point, Mr Kalra was a necessary party to the trade mark invalidity claim that ACO wished to bring because he was the registered proprietor of that mark.

Invalidity of Mr Kalra's Mark

S.47 (2) of the Trade Marks Act 1994 provides:

"The registration of a trade mark may be declared invalid on the ground -
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5 (1), (2) or (3) obtain......
..............................................
unless the proprietor of that earlier trade mark ....... has consented to the registration."

The deputy judge held that  UK 00004073400 (Mr Kalra's "LMR" mark) was similar to ACO's WO 0000001681529 mark and was registered with respect to identical (or very similar) goods in class 14, such that there was a likelihood of confusion.

Mr Kalra tried to rely on s.48 (1) and (2) of the Act but was unable to prove 5 years' acquiescence as Mr Kalra had applied to register his mark in 2025.

Mr Stone ordered Mr Kalra's mark to be expunged ab initio from the register.

Comment

This short judgment summarises the law on infringement under s.10 (1), (2) and (3) of the Trade Marks Act 1994 and discusses some of the defences.  It also considers the law on joint tortfeasance and invalidation of trade marks.  The deputy judge's clear but pithy statements of the law are likely to find themselves into skeleton arguments for years to come.   Anyone wishing to discuss this case note may call me on +44 (0)20 7404 5252 or send me a message through my contact page.