[Guest post] Retromark Volume XV: the last six months in trade marks

Darren Meale of Simmons & Simmons presents the fifteenth volume in his rundown of notable trade mark cases over the past six months. Here's what he writes:

Retromark Volume XV: the last six months in trade marks

by Darren Meale

Here we go again! This volume picks up where the last one left off in July 2024, but also includes a slightly older case that was not on my radar last time around.

1. Don’t be too simple with similarity – take a common-sense approach

Unicorn Studio Inc v Veronese [2024] EWHC 1098 (Ch) (April 2024)

We start with an important reminder that the similarity of goods and services should not be considered at too high a level of generality.

A UKIPO Hearing Officer held electric lamps and chandeliers in Class 11 and mirrors in Class 20 similar to figurines of precious metal; Works of art of precious metal in Class 14 along with (amongst other things) other types of figurines, statues and works of art and ornaments in order to find a likelihood of confusion between two marks featuring the world VERONESE.

On appeal, sitting as a Deputy High Court Judge, Iain Purvis KC overturned the Hearing Officer’s findings of similarity on the basis that the Hearing Officer had conducted a “box ticking exercise” looking to see how many of the Canon factors could be said to have been satisfied. The Hearing Officer had then focused on findings that the competing goods would be sold by the same retailers and used by ordinary people. The judge held that “[i]t seems to me the greater the level of generality at which some similarity under Canon factors can be found (ie both goods are ‘sold in large department stores’ or both goods are ’used by ordinary people’) the less relevant could it be to any question of confusion, and any assessment of similarity of goods should take that into account.” The judge concluded that “any finding of similarity in the end requires the exercise of common sense and requires the hearing officer to stand back and consider the overall question”.

I can’t find this case online for free – only the cost judgment appears available – so you’ll need to turn to your favourite subscription case law database to read it in full.

2. An AGA saga: the High Court warms up on exhaustion and copyright, but only the latter will be re-heated when the case is served up in the Court of Appeal

AGA Rangemaster Group v UK Innovations Group [2024] EWHC 1727 (IPEC) (July 2024)

I grew up in a world in which there were no such things as AGAs, and with prices in the thousands these cast-iron heat-storage cookers remain far from a mass market product. The defendant sold “eControl Systems” to convert gas AGAs to run on electricity but also sold 26 AGA cookers it had retrofitted with these systems itself. The latter was enough to cause the claimant to sue for trade mark and copyright infringement.

The claimant contended that the changes made were such that what the defendant sold was no longer the original AGA product but a new product which bore the AGA name, in infringement of its rights. The defendant denied infringement with a number of arguments, but it focused its defence by relying on exhaustion of rights. As the retrofitted AGAs had already been on the market, the claimant’s trade mark rights in them were exhausted unless they had “legitimate reasons to oppose further dealings” in the goods as per section 12(2) of the Trade Marks Act. The judge held that the claimant did have such legitimate reasons – although he indicated he had “not found this an easy matter to decide”, which is judge speak for “I had discretion to go either way and there was not much in it”. The judge explained he found with the claimant not because of the extent of the works the defendants did to the cookers, nor for the fitting of the control systems per se. Rather “it is because of the way in which the Defendants marketed and sold the eControl Cookers”.

So, refurbishment and conversion to electric was fine on the facts. But where the defendant went wrong was in their marketing, which included statements such as “Buy an eControl Aga”; "Controllable Aga Cookers"; and “With decades of Aga experience and conversions…”. Taken as a whole, the judge felt that the statements would give the impression that the defendant offered a product originating from the claimant and that the eControl System was connected to the claimant. The defendant’s invoices also described the products in a manner which did not help. That said, the judge declined to find that the presence of the defendant’s badge on the retrofitted products was objectionable in the context of post-sale confusion. Although the claimant was able to defeat the exhaustion defence here, it seems likely that were the defendant sufficiently to alter its approach to marketing, it should be able to operate its business model without trade mark infringement.

However, the defendant was also found to infringe a 2D and a 3D mark of the claimant depicting an AGA, and to have infringed copyright in a control panel drawing of the claimant’s – albeit they were saved by section 51 of the CDPA 1988 in what the judge described as “the most difficult aspect of the copyright claim” not least because he received little in the way of submissions from the parties on it. The judge also clearly struggled to make sense of this provision (which allows the making of an article to a design in a design document without infringing copyright) in light of the CJEU’s landmark Cofemel judgment. Fortunately, the Court of Appeal has granted permission on the copyright claim – and so perhaps I will return to explore it further then (even though this blog is mostly all about trade marks). IPKat here.

3. SHORTSTV scope too slim to stop YouTube Shorts

Shorts International Ltd v Google LLC [2024] EWHC 2738 (Ch) (October 2024)

Google was sued for its use of “shorts” in the context of YouTube shorts, which are exactly what you’d expect – short videos. The claimant owned various SHORTS and SHORTSTV marks, most of them figurative like the example below, but it also owned a word mark for SHORTSTV.

In a judgment given by Michael Tappin KC sitting as a Deputy High Court judge, the word mark was held invalid for most of its goods and services where the judge felt consumers would consider the mark to indicate short-form audiovisual content and other marks were revoked for non-use for some goods and services. What was left was held to have a low distinctive character and was not strong enough to prevent Google’s uses. Where Google had used signs including SHORTS, the combination of their descriptive nature and the claimant’s marks’ low distinctiveness led the judge to conclude that there was no likelihood of consumers being confused.

The judgment is a long one, including interesting discussions of points such us: (1) whether the claimant could overcome an invalidity attack by narrowing its specification to carve out any coverage of “short films” (this was not needed in the end but had it been, the amendments would have been refused following Postkantoor); (2) an exploration of a number of instances of alleged confusion which were not enough to persuade the judge to find in the claimant’s favour; (3) a finding that the claimant did not benefit from a reputation but even if it did, it suffered no injury; and (4) that had there been a finding of infringement, Google would not have benefitted from a section 11(2)(b) descriptive use defence as it had proceeded to launch YouTube Shorts in the UK in the face of knowledge of the claimant’s marks and of its business and of its allegations that there would be infringement of its rights.

4. Wash, Wiggle & Wag at your peril: you may get sued for passing-off

Laura Thurgood v Danielle Laight [2024] EWHC 2947 (IPEC) (November 2024)

I undoubtedly have a sore spot for dog related trade mark cases, although I do not think I have managed to include one since Volume 2. In this succinct 49 paragraph IPEC judgment of David Stone sitting as an Enterprise Judge, the claimant successfully sued for passing-off.

The claimant had offered a mobile dog grooming salon service under a variety of names including SCRUFFY2FLUFFY and DOGGY STYLE. The defendant had worked in the claimant’s business on the claimant’s case as “an independent contractor”, being paid a fixed fee per groom. The claimant bought a van with registration number WG57 DOG from a third party which had traded under the WASH WIGGLE & WAG name (which was printed on the side of the van). With the third party’s consent as they no longer wished to trade under that name, the claimant adopted it and no doubt with the help of the hard word of the defendant, built a business around that name using it as a badge of origin and not, as the defendant has argued merely as a tagline or other promotional slogan.

When it appeared that the defendant had been grooming “off the books”, the parties’ relationship came to an end. A week later, the defendant incorporated Wash Wiggle & Wag Limited and began trading by herself, adopting as her own social media pages which she had previously operated on the claimant’s behalf and with the claimant’s consent. Indeed, it appears that the defendant tried and indeed succeeded in a hostile takeover of the business under the Wash Wiggle & Wag name such that the claimant eventually abandoned it.

The judge found that the claimant had established goodwill in the name and that she owned that goodwill. With that established, there was little hesitation on the part of the judge in finding that the defendant’s adoption of that name for herself was a misrepresentation. Damage was also readily apparent.

Reading between the scruffy and fluffy lines, it may be that the defendant worked hard for the claimant and felt that she would succeed running a business by herself. But she went about it in a dramatically wrong way: appropriating the name for herself and proceeding aggressively to take the claimant’s customers as her own, misleading them in the process.

5. Assessment of similarity of services not so extreme as to justify reversal says Court of Appeal

Extreme Networks Ltd v Extreme E Ltd [2024] EWCA Civ 1386 (November 2024)

The Court of Appeal has overturned a number of first-instance decisions in trade mark cases of late, but in this judgment it reverses an overturning by the High Court of a UKIPO opposition decision. In this rare second-level UKIPO appeal, the Hearing Officer found a likelihood of confusion between these two logos in relation to some services in Class 41 and all in Class 43. On appeal to the High Court the appeal was allowed in relation to certain of the Class 41 goods.

On further appeal to the Court of Appeal in relation to the Class 41 goods, Arnold LJ commented that it raised “important points of principle as to the correct approach to the assessment of similarity of services and as to the correct approach to appeals on such issues where, as is often the case, the hearing officer's reasoning is highly compressed”.

The appeal turned on whether "booking of seats for shows" in Class 41 should be considered similar to a range of services in that class including “cultural activities; organization of … cultural events and activities; organization of exhibitions for cultural and educational purposes". The Hearing Officer had found them similar in part on the basis that the “same businesses that provide and organize shows are also likely to provide services for the booking of seats”. The High Court judge disagreed, finding that the core of the application’s services was the organising of shows and events for which the booking of seats was “merely incidental”, such that the mere fact that the public can book seats for shows “cannot create a material overlap sufficient to support a finding of similarity”. The Court of Appeal did not like this reasoning and felt it was both wrong and that it failed to identify an error of principle. Arnold LJ’s view was that the distinction between “core” and “incidental” services may be important when considering whether services are identical, but “it is of little relevance to an assessment of similarity”, with the High Court judge’s reference to “material overlap” suggesting he was unduly focused on identity. Further, Arnold LJ felt that it was open to the Hearing Officer to conclude that there was a close connection between the two services on the basis that, for example, one is indispensable to the other – one books seats for the other’s show. Accordingly, there was no error of principle. The High Court judge’s reasoning in relation to another match up of services was similarly dismissed and the Court of Appeal restored the Hearing Officer’s decision.

As is common in Arnold LJ’s judgment, the decision is also an aide-memoire for anyone reviewing the law on similarity of goods and services and the interpretation of goods and services as registered, with excellent summaries of both set out in the first half of the judgment.

It is also an illustration of a clear difference between appeals via the courts and appeals to the Appointed Person in cases starting in the registry. The latter have no further right of appeal, so had the High Court’s decision been that of an AP, the claimant would have been stuck with it.

6. Overlawyering fails to put adidas into a winning position

Thom Browne Inc v adidas AG [2024] EWHC 2990 (Ch) (November 2024)

Big brands often invest heavily in protecting their marks, including by investing in non-traditional marks for shapes, colours and, as per this case, position marks. It can be a long and costly project to get these marks on the register in the first place, and Retromark has long covered cases refusing these types of marks protection. In this case, adidas had secured a whole bunch of position marks for its famous “three stripe” logo, but found it very difficult to keep them alive or assert them in its fight with Thom Browne’s (TB) four stripes.

Mrs Justice Joanna Smith’s judgment is an epic 775 paragraphs and considers 16 adidas position marks (half of which are pictured in the table below albeit without their written descriptions) against 24 specimen uses of a four bar design by TB (out of over 1,000 actual items). Interestingly, it was common ground that Thom Browne’s four bar design arose after adidas demanded back in 2007 that it move away from its then three-bar motif. Years on, adidas were obviously not satisfied that adding an additional bar was enough to distinguish the brands. Following litigation in the US from which TB emerged victorious, it sought to invalidate a number of adidas UK registrations, causing adidas to counterclaim for infringement.

The judgment records that neither side could find any English authority which deals with the registerability of position marks – so this case is now it. In her decision which is challenging to summarise, the judge considers each of the 16 position marks in turn, along with their written descriptions, finding that eight were invalid and eight were valid. The invalid marks generally fell down because they were held to be insufficiently clear, imprecise and involving a multiplicity of signs and thereby uncertain in their scope. As each mark was clearly the sum of an image and a written description, interested readers should read the relevant paragraphs in the judgment in full and not draw too much in the way of conclusions simply from the images in the table.

Although half of the registrations survived with some being cut down owing to lack of use. With what remained, the judge went on to find that none of the 24 specimen TB products infringed any of them, noting that the surviving adidas marks bore from a very faint level or similarity to only a moderate level of similarity to the various TB specimens. At trial, adidas did not argue a likelihood of confusion at the point of sale, but limited their case solely to post-sale confusion (which seems to me by its nature to always present a better option for claimants, just like claims of “indirect” confusion), but the judge was not satisfied of any such likelihood. Section 10(3) and passing claims failed too.

Of separate interest is the judge’s attack at paragraphs 58-68 on adidas’ solicitors for failing to comply with PD 57AC in the preparation of its witness statements (for a refresher on what this is, see Lifestyle Equities in Volume 11). The judge remarked that their non-compliance was on a “whole new level” and that the statements were “heavily over-lawyered”. The statements were “a blatant breach” of the PD’s requirements and one of adidas’ solicitors appeared not to “appreciate either the seriousness of the non-compliance or its potential consequences”. The judge was clearly not happy, although did – sensibly – acknowledge the tension between the PD and the need in cases of this type to provide a narrative explanation of evidence of historic use and reputation where there is unlikely to be a witness available to speak to it. In fairness to the solicitors, that tension is a very significant one, because the PD appears entirely incompatible with the most sensible way of adducing this type of evidence, which notably is still permitted at the UKIPO by way of the old practice (although, as many will know, the UKIPO takes an extremely lax approach to what one can shove into evidence). The judge concluded by suggesting that parties need to seek directions at an early stage to deal with the manner of adducing this evidence, but I think it would also be helpful if the PD might be adjusted to set out some sensible practice on this point, rather than the profession having to wait and see it evolve over time as judges are called to manage individual cases.

7. Closure in SkyKick may open up a new world of bad faith fights

SkyKick UK Ltd and another v Sky Ltd [2024] UKSC 36 (November 2024)

This case – which now spans ten judgments over eight years – has appeared in more volumes of Retromark than any other. If you want some background (and if so, where have you been all this time?) you can start here. The UK Supreme Court has now drawn this saga to a close by bringing some clarity to the doctrine of bad faith when applied to the claiming of many or broad terms in trade mark specifications. In a long judgment with whom the four other Supreme Court Justices agreed, Lord Kitchin reaches some sensible conclusions.

First, no intention to use equals bad faith, unless you have a reasonable explanation. Secondly, applying for all goods and services in all classes is probably not on. Thirdly, long specifications may be bad faith and it will be a “matter of degree” when comparing the breadth and length of the specification with the “size and nature of the applicant’s business (or lack of it)”. Fourthly, registering for broad categories that cover distinct categories where there is no intention to use those distinct categories may be bad faith – including so far as “computer software” is concerned – but how this is to be assessed is not made plain. Fifthly, conduct in enforcing a registration may be taken into account in assessing bad faith, Sky’s persistence in relying on the full scope of its mark until a very late stage in the proceedings counting against it.

There’s more detail in the 145-page judgment of course, but still – in my view – no real penalty for filing for broad terms. The only risks of doing so are that at some later point you will see your mark cut down (which would happen after five years if you haven’t used anyway) or, potentially, you will give a counterparty a basis for reprisal should you assert your mark against them. The latter counter-attack may now become a matter of routine for those defending infringement proceedings or oppositions. More from the IPKat here.

8. Alice, Alice, who the [audio or visual equipment] is Alice?

Alice Ltd v Photogram Ltd and others [2024] EWHC 3256 (IPEC) (December 2024)

The defendant sold the ALICE CAMERA, a camera add-on for smartphones aimed at general consumers and content creators who wanted a higher quality of video production. The claimant manufactures and sells “audio products for the Pro studio and broadcast market” under the mark ALICE. These products included mixing desks; pre-amplifiers; compressors and amplifiers – all so far as I understand, technology that processes audio that has particular utility in radio and TV production. The claimant also had a Longitudinal Timecode Distribution Amplifier ("Timecode DA") product which sent an audio signal to equipment which included cameras to, for example, help avoid lip sync issues.

The defendant had all but admitted that it infringed the claimant’s registration, but only if the claimant could prove it had used it across its full specification in class 9 (emphasis added):

Apparatus for recording, transmission or reproduction of sound or images; audio apparatus; signal-mixing apparatus and instruments; sound recording and sound reproducing apparatus and instruments; signal-mixing, sound recording and sound reproducing apparatus and instruments for use in radio and television broadcasting.

The battleground is rather obvious: the claimant does audio, but the defendant does video. Reading through this case without having first looked at the outcome, my expectation was that the claimant would prove use for at least some of the “audio” goods but that, as a minimum, “or images” would be crossed out. Infringement would then be decided by reference to the similarity of goods given that the marks were all but identical.

In her decision following a day-long IPEC trial, HHJ Melissa Clarke first set out a very helpful summary of the law on proof of use and the principles to apply when framing a fair specification based on evidence of use. In applying the law, it seems to me that the options available to the judge were to (a) delete the broad terms and replace them with terms specific to the individual product types the claimant had sold, such as “audio mixing desks” (this was the defendant’s case); (b) maintain everything but “or images” on the basis that the claimant’s products were a range of audio products; or (c) maintain the whole specification.

In choosing option (c), the judge was satisfied that each of the terms referring solely to “audio” and “sound” should be maintained even though none of the claimant’s products actually recorded, transmitted or reproduced sound or images. That left the first term in the list, which one might expect from that conclusion should be lost. In what might be considered a generous interpretation of the term, the judge held that the claimant should maintain the whole of its class 9 specification, including the “or images” wording. She felt that the claimant’s products were “used in” audio and audiovisual environments, or that they should be considered to belong to the same group or category as apparatus for recording, transmission and reproduction of sound or images, and are not in substance different from them (to apply the test in Property Renaissance). If it were wrong to allow the full specification to be retained, the judge held that the first term should, at most, be amended to “Apparatus for use in recording, transmission or reproduction of sound or images”.

This is an interesting application of the principles to be applied to framing a fair specification in light of the specific use, highlighting the discretion of, and value judgment to be made by, the trial judge in circumstances where a range of outcomes is probably rationally supportable on the law and any given facts. I wonder whether this sort of “fair specification” assessment will become more common but in the context of the type of bad faith attack we may now encounter following the SkyKick decision above.

9. Aldi’s bull benchmark beaten by Thatchers in cider can confrontation

Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5 (January 2025)

Trade mark lawyers would tend to tell you, with some confidence, that English law cannot do much about lookalike products because no one is confused. Passing-off cases – traditionally the route to go for protecting get-up – inevitably fail on this basis. But the Court of Appeal’s decision in Thatchers has blown a hole in conventional thinking, that is if you qualify for extended protection.

The background to this battle is in Volume XIV. Importantly, this was not just a passing off claim but a claim for 10(3) infringement based on Thatcher’s reputation for its figurative registration for the image shown in the table.

The IPEC found some of the ingredients for a 10(3) claim satisfied but not that Aldi had obtained an unfair advantage. On appeal, the Court of Appeal led by Lord Justice Arnold pulled out several errors in the first instance judgment and concluded the claim should be decided the other way. The main errors found were:

• The judge was wrong to find that the allegedly infringing sign she had to consider was the Aldi product itself, rather than the design printed on it. So 2D mark v 2D sign not 2D mark v 3D sign. This led the judge to downplay the degree of similarity between mark and sign.
• It appeared that the trial judge muddled in her judgment an intention to deceive (in the context of passing off) and an intention to take advantage of the reputation of the trade mark.
• The judge’s conclusion that Aldi’s design had not departed from its house style for other, non-cloudy lemon ciders was held irrationally supportable on the facts. The judge had also erred in disregarding minor elements – faint horizontal lines – which Aldi had copied from Thatcher’s mark onto its product.

With these errors in play, Arnold LJ proceeded to substitute the trial judge’s conclusion on 10(3) unfair advantage with his own. He did so with little hesitation: the “inescapable conclusion” was that Aldi intended to convey that its product was like the Thatchers product, only cheaper – and in doing so it intended to take advantage of Thatchers’ reputation to sell its product. Relevant in that conclusion was the finding that the Aldi product achieved significant sales in a short period of time without any promotion, and (albeit less so) that it did not contain real lemon juice in contrast to the more expensive Thatchers’ product. In Arnold LJ’s view, this case was exactly what the then Court of Appeal, reluctantly following the guidelines set out by the CJEU, had ruled unlawful in the classic authority of L’Oreal v Bellure as a case involving a “transfer of image” (aka “riding on the coat-tails”) of a mark. Arnold LJ went on to reject a defence of descriptive use under section 11(2)(b) of the Trade Marks Act, both on the basis that the sign could not be dissected into descriptive and distinct elements, and on the basis that Aldi use’s was “not in accordance with honest practices in industrial and commercial matters because it was unfair competition”. Finally, he declined to depart from L’Oreal v Bellure, disagreeing with the infamous remarks made by Jacob LJ in that case.

This is a fascinating case. One can ponder whether it was right to overturn the trial judge’s conclusion given it was the outcome of a multi-factorial assessment – even in light of the errors relied upon on appeal. There is also a debate to be had around the suggestions that the case should not have been heard in the IPEC in two days as this prevented full argument of the points which emerged as determinative on appeal. Leaving those aside, we have a decision which many are regarding as a big deal. Have the tables turned on lookalikes? Maybe, but let’s not forget that Thatchers’ won because it registered its packaging and was established enough to enjoy a reputation. Not all brand owners will tick both of those boxes. More from the IPKat here and here.

***

Thanks to my colleagues Bryan Tan and Esse Ejere for helping me collate this volume.

• Volume I – April 2016 to March 2017
• Volume II – March 2017 to September 2017
• Volume III – November 2017 to April 2018
• Volume IV – May 2018 to October 2018
• Volume V – November 2018 to March 2019
• Volume VI – April 2019 to October 2019
• Volume VII – October 2019 to April 2020
• Volume VIII – April 2020 to October 2020
• Volume IX – November 2020 to May 2021
• Volume X – April 2021 to December 2021
• Volume XI – January 2022 to June 2022
• Volume XII – July 2022 to February 2023
• Volume XIII – February 2023 to November 2023
• Volume XIV – December 2023 to July 2024