Planetart LLC v Photobox Ltd & Anor – Trade Mark Infringement and Passing Off in the context of mobile apps

On 25 March 2020, the High Court handed down a judgement considering trade mark infringement and passing off in relation to a mobile app, and tackling the issues of descriptive signs and the importance of the factual context of use and consumer confusion.

Background:

The Claimant had been providing a mobile app under the name FreePrints since 2014, offering users a photo printing service, with a free monthly allowance. The evidence showed the app was very successful and the Claimant was the market leader in the UK.

The Defendant launched an app providing a similar service in 2019 under the name Free Prints, using a logo with a similar colour scheme:

Initially, the Claimant unsuccessfully sought an interim injunction against the Defendant based on passing off. Interestingly, it subsequently attempted to adduce survey evidence, which was refused by the Court due to the lack of sufficient contextualisation of the proposed survey and the inclusion of leading questions. This decision is a common illustration of the UK Courts’ reluctance to substitute their assessment of the likelihood of consumer confusion with survey evidence.

Subsequently, the Claimant initiated formal proceedings on the basis of (i) trade mark infringement (S. 10(2) and S. 10(3) of the Trade Marks Act 1994 (“TMA 1994”), (ii) passing off, as well as (iii) the invalidity of the Defendant’s UK registered mark for the words PHOTOBOX FREE PRINTS (predating the Claimant’s UK registered trade mark ) on the grounds of passing off and bad faith.

Likelihood of Confusion:

Mr. Daniel Alexander QC, sitting for the Chancery Division, found that the Claimant’s mark as a whole had acquired enhanced distinctive character through extensive use.

The Defendant’s app icons presented significant aural and visual similarities with the Claimant’s mark. Crucially, the Judge held that the words featured below mobile apps’ icons on smartphones are source-identifying brands and would be perceived as such by consumers.

The Defendant’s icons were not sufficient to dispel confusion, as they were more similar to the Claimant’s than other third party app icons.

The similarity between the relevant marks, the identity between the goods and services in question, and the reputation attached to the Claimant’s mark therefore led to a finding of likelihood of confusion under S. 10(2) TMA 1994.

By reference to the guidance in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, the Court considered that that the context of presentation of the Defendant’s marks did not negate confusion. It cautioned that in an infringement action, the context of use should be assessed conservatively, as the purpose of registered trade mark protection is to some extent to offer exclusive rights, regardless of the wider context.

One of the critical issues between the parties was the absence of any evidence of actual consumer confusion. The Court took the view that if there had been confusion, it would have come to light as is normally the case for large scale consumer products. In this case, there was very little operative confusion because the disputed icon only appeared after the app was downloaded without confusion on the mobile application platform. This is therefore an illustration of post-sale confusion, in that it did not lead to any change in consumer behaviour. However, the Judge stressed that the test under S. 10(2) TMA 1994 did not require such a change in economic behaviour or even actual confusion.

Finally, and in contrast, there was no likelihood of confusion in respect of use of the Defendant’s app as presented on the mobile application platform. In that context, the element PHOTOBOX is the dominant and distinctive element of the Defendant’s sign and Free Prints is here merely descriptive.

Unfair advantage and detriment to the distinctive character of the earlier mark:

The Judge found that the Claimant’s mark had acquired the prerequisite reputation, and that consumers would establish a link between the relevant marks.

In his view, the extensive use of the Defendant’s app icons on consumers’ phones is likely to impair the ability of the Claimant’s mark to function as a badge of origin, thus damaging its distinctive character. Consequently, the Claimant would be unfairly compelled to distinguish its mark from the Defendant’s app icons in order to maintain its level of recognition.

It was also found that the Defendant took unfair advantage of the Claimant’s goodwill and reputation, even though it was not its intention.

The Defendant did not escape liability under this ground as the use was not with due cause, insofar as the infringing sign was used as a brand and not descriptively. So, there was a finding of infringement pursuant to S. 10(3) TMA 1994 in relation to the use of the Defendant’s app icons.

Again, the claim under this head also failed in respect of the use of PHOTOBOX FREE PRINTS, due to the presence of the first distinctive and dissimilar element.

Passing Off:

The Court was satisfied that the Claimant had acquired goodwill in respect of its FREEPRINTS brand, as it was associated with its business or was connected to the Claimant in the mind of the public. The sign had acquired a secondary meaning, partly because both words FreePrints were conjoined into a single word not present in the English language.

However, the Judge found there was no misrepresentation – there was no confusion at the time the Defendant’s app was downloaded because of the inclusion of the element PHOTOBOX when viewed in the mobile application platform, and there had only been very little or no operative confusion/misreprentation on the facts.

Invalidity Claim

Finally, the Claimant’s invalidity claim against the Defendant’s trade mark registration for the word mark PHOTOBOX FREE PRINTS on the grounds of passing off and bad faith did not succeed. The evidence showed that the Defendant’s purpose to file the application was not related to the client’s brand, and the words FREE PRINTS in the mark as applied for were descriptive.

Conclusion:

In closing, the Judge invited both parties to reflect and consider the best remedies in the circumstances. He suggested guidelines for the Defendant to amend its branding, and also warned the Claimant they could not seek to prevent descriptive instances of use of FREE PRINTS.

This decision provides helpful guidance as to the enforcement of trade mark law in the topical and ever-rising field of mobile apps. It also serves as a reminder that descriptive marks can be enforceable if they acquired distinctiveness (and particularly if other similar branding elements are present), and that registered trade mark infringement remains an efficient tool for proprietors to enforce their rights.