Trade Marks and Passing Off - Planetart v Photobox

Senado Federal / CC BY (https://creativecommons.org/licenses/by/2.0)

Jane Lambert
Chancery Division (Daniel Alexander QC) Planetart LLC and another v Photobox Ltd and another[2020] EWHC 713 (Ch) (25 March 2020)

This was an action for trade mark infringement. passing off and invalidation of one of the defendant's trade marks. The claimants were the Delaware company, Planetart LLC, and its English subsidiary, Planetart Ltd.  Those companies offer a photo printing service called FreePrints that is best explained in the How it Works video on the home page of their website. The defendants, Photobox Ltd. and Photobox Free Prints Ltd. offer a service that is similar to the claimants'.

The first claimant has registered the following as a UK trade mark for a range of goods and services in classes 9, 16, 40 and 42 under trade mark number UK3393165 with effect from 17 April 2019:

The defendants have used the following icons on their phone apps:

They also used the following signs in their advertising and packaging:

The claimants objected primarily to the defendants' use of the words "Free Prints" on their apps and in their advertising.  The defendants replied that the claimants could hardly complain at the use of the words "Free Prints" to identify a service that prints photographs free of charge. They contended that the case was really an illegitimate attempt to monopolize ordinary English words. They argued that when a trader uses a descriptive term for a brand, trade mark law and the law of passing off allow a reasonable degree of latitude to a competitor that uses similarly descriptive terms in its own branding.  In such cases, the similarity of the parties' branding means that the likelihood of confusion is low.  The claimants' response was that the sign "FreePrints" as a single word had come to denote their business. They added that the defendants had gone further than merely use the words "Free Prints" descriptively.   By adopting a similar colour scheme and other features of the claimants' branding, the defendants had misrepresented a connection with their business and services.

The action had to start off as a claim for passing off as the first claimant had applied for the registration of the above trade mark only the day before its solicitors sent their letter before claim.  The claimants issued proceedings on 26 April 2019 and applied for an interim injunction.  That application was stood over until trial upon the defendants' undertakings not to expand their business.  After the first claimant's mark was registered the claim was amended to include trade mark infringement under s.10 (2) and (3) of the Trade Marks Act 1994.  The action came on for trial before Mr Daniel Alexander QC sitting as a Deputy Judge of the High Court between 14 and 17 Jan 2020. The learned deputy judge delivered his judgment on 25 March 2020 (see Planetart LLC v Photobox Ltd and another [2020] EWHC 713 (Ch) (25 March 2020).

Mr Alexander set out the law on trade mark infringement and passing off between paragraphs [14] and [80] of his judgment and the relevant facts between paragraphs [81] and [143].  He found that the services in respect of which the defendants used their signs were the same as or similar to those for which the first claimant's mark was registered.

He compared the registered mark with the icons that the defendants had used for their apps.  He directed himself at [148]:

"It is well-established that a global appreciation of the respective marks and signs is required from the perspective of the average consumer but it is useful to break down the various ways in which the marks may be evaluated. It is important to have regard to the similarities but it is also necessary to consider the differences and to do so for each of the marks in turn. While the comparison is of the sign against the registered mark it is necessary to take into account the context of use to the extent permitted by the law ...."

He found that there were significant aural and visual similarities and some conceptual similarity.  There was evidence that the words beneath the logo were a brand rather than descriptive. He was not persuaded that the Photobox starburst logo was so readily recognized by the average consumer that it would be sufficient to dispel confusion in all circumstances.  App users would expect a brand name to appear below the logo. Taken together, and having regard to the reputation attaching to the FreePrints icon and the popularity of their goods and services, the similarities between the mark and defendants' icons, taken as a whole, were sufficient to give rise to a likelihood of confusion within the meaning of s,10 (2) of the Act.

The situation was different with the other signs. The word "PhotoBox" appeared prominently and in a position and manner where ordinarily consumers would expect a brand to be found. That would influence the average consumer's perception of the defendants' sign,  The sign would also be accompanied by some text describing the app and identifying Photobox.  The Photobox Free Prints signs would not infringe.

Turning to the claim under s.10 (3) Mr Alexander held that a claim under that head did not add anything of significance to the claim under s.10 (2) but the position as to liability was the same under that head.  He found that the mark had a reputation, an average consumer would perceive a link between the mark and the icon, the appearance of the defendants' logo on millions of screens would dilute the claimants' mark and take unfair advantage of it.  That would not be true of the PhotoBox signs as the consumer would not perceive a link to the mark and those signs would not take unfair advantage of the claimants' mark.

As for passing off. the deputy judge found that the claimants had some goodwill in the mark "FreePrints" and that it had acquired a secondary meaning in the sense understood by the case law. Because the composite word FreePrints is not itself a normal English word even though it is closely similar to a pair of normal English words, it is easier for that composite to acquire such distinctiveness than would have been the case had reliance been placed on the two words separately. However, that goodwill was not so strong that the mere use of the words "Free Prints" in relation to a business of supplying free prints or an app for that purpose had come to denote the claimants' business or one connected with them. The claimants had some goodwill in the butterfly image but not in the turquoise and white colour scheme.

Except for the icon on the smartphone screen, the defendants did not use the words "Free Prints" simpliciter.  The icon would only appear after a customer had decided to buy the app and install it on his or ger phone so it could not constitute a misrepresentation.   The icon in the App Store would be accompanied by text which would distinguish the defendants' app from the claimants.' There had therefore been no misrepresentation and consequently no damage and of course no passing off.

The first defendant had registered the words PHOTOBOX FREE PRINTS as a UK trade mark for goods and services in classes 16 and 40 under registration number UK3342932with effect from 3 Sept 2018.  The claimants applied for a declaration of invalidity under s.47 (1) and s.3 (6) of the Trade Marks Act 1994.  In support of the application under s.47 (1) the claimants relied on s.5 (4) of the Act.  The deputy judge dealt with this shortly at [206]:

"I have considered the latter ground above. In my judgment the Defendants trade mark, PHOTOBOX FREE PRINTS taken as a whole with the term PHOTOBOX as the most distinctive and dominant feature of it is not liable to be prevented by the law of passing off for the reasons given."

As for bad faith, Mr Alexander referred to  Red Bull GmbH v Sun Mark Ltd and another  [2012] EWHC 1929 (Ch), Carry On Films Ltd's Trade Mark (BL O/567/19, 27 Sep 2019 and the Court of Justice's decision in C-104/18P Koton:

"The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C-529/07, EU:C:2009:361 , paragraphs 37 and 42). It is only in that manner that a claim of bad faith can be assessed objectively."

He carried out that assessment as follows:

" First, the Defendants' trade mark is composed (broadly) of two elements. The initial element, which has a prominent distinctive character is PHOTOBOX. It is the Defendants' brand which they have used for a considerable time. Second, it consists of the words FREE PRINTS which, as I have held, are descriptive of an app offering free prints or of a service which does so. Third, while the First Defendant was clearly aware of the Claimants' substantial and widely promoted business carried on under or by reference to FreePrints and made its application deliberately and knowingly in that sense, it did not in this respect do so to take advantage of the goodwill and reputation of the Claimants' business but rather for the reason stated by the Defendants. Fourth, the approach to branding in that respect was consistent with the Apple App Store Guidelines even if Apple may have objected for other reasons. Fifth, for the reasons given above, the manner in which the elements of the mark are combined sufficiently clearly signal that the goods and services to which it would be applied have their trade origin in PHOTOBOX and are free prints or a service for delivering such. Sixth, an applicant for a trade mark must be permitted reasonable latitude in adopting a mark which contains both a brand and a description of what the goods and services are if due weight is to be given to the need to permit such descriptions. Seventh, the Claimants do not claim to have goodwill in the term "FREE PRINTS" as such and recognize that it is capable of being used descriptively which in the context of the mark applied for it is. In my judgment, there is a significant difference between making a trade mark application which seeks legitimately to protect its own business and which uses ones own mark as the most prominent element and a mark that is applied for in bad faith."

He concluded that the application had not been made in bad faith.

His judgment was as follows:

"1) The use by the Defendants of the Photobox Free Prints Icon infringes the Claimants' Registered Trade Mark pursuant to both sections 10 (2) and 10 (3) of the Trade Marks Act 1994 but the other claims for trade mark infringement are dismissed.
b) The claim for passing off is dismissed.
c) The claim to declare the Defendants' trade mark registration for PHOTOBOX FREE PRINTS invalid is dismissed."

Anyone wishing to discuss this article or trade marks and passing off generally is welcome to message me on my contact page.  I should like to wish all my readers a Happy Easter.