Electrocoin Automatics Ltd v Coinworld Ltd and Others
| Jurisdiction | England & Wales |
| Judgment Date | 29 June 2004 |
| Neutral Citation | [2004] EWHC 1498 (Ch) |
| Date | 29 June 2004 |
| Docket Number | Case No: HC 03 CO 1038 |
| Court | Chancery Division |
[2004] EWHC 1498 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Mr Geoffrey Hobbs QC (sitting as a Deputy Judge)
Case No: HC 03 CO 1038
Mr John Baldwin QC and Mr Thomas Moody-Stuart (instructed by Berg and Co) for the claimant
Mr Alastair Wilson QC and Dr Peter Colley (instructed by Charles, Crookes & Jones) for the defendants
Hearing dates: 22–25 March 2004
Approved Judgment
(Sitting as a deputy judge)
INTRODUCTION
This is an action for infringement of the rights conferred by the following trade mark registrations:
United Kingdom Trade Mark No 2001614
Filing date: 1 November 1994
Registration: 24 May 1996
BAR-X
Class 09: Game, entertainment, recreational and amusement machines and apparatus; video games machines and apparatus; gaming machines; fruit machines; amusement with prizes machines; cabinets and controlling apparatus for the aforesaid goods; parts and fittings for all the aforesaid goods.
Community Trade Mark No 1822238
Filing date: 17 August 2000
Registration: 4 February 2002
BAR-X
Class 09: Game, entertainment, recreational and amusement machines and apparatus; video games machines and apparatus; gaming machines; fruit machines; amusement with prizes machines; cabinets and controlling apparatus for the aforesaid goods; parts and fittings for all the aforesaid goods.
Class 41: Services for the provision of gaming and entertainment machines and apparatus and of video games and amusement games and machines; rental and leasing of gaming and entertainment machines and apparatus and of video games and amusement games and machines, advisory and consultancy services relating to gaming, entertainment and amusement machines and apparatus.
United Kingdom Trade Mark No 2266140
Filing date: 3rd April 2001
Registration: 21 September 2001
BAR-X
Class 40: Upgrade, modification and rebuild of gaming, entertainment and amusement machines and apparatus.
Class 41: Services for the provision of gaming, entertainment and amusement machines and apparatus; rental and leasing of gaming, entertainment and amusement machines and apparatus; advisory and consultancy services relating to gaming, entertainment and amusement machines and apparatus; operation of machines and apparatus at sites for gaming, entertainment and amusement purposes; arranging contests and competitions in relation to the playing of games with gaming, entertainment and amusement machines and apparatus; providing gaming, entertainment and amusement services on video and computer systems and via on-line Internet and other network communications.
United Kingdom Trade Mark No 2242596A
Filing date: 15 August 2000
Registration: 25 May 2001
OXO
Class 09: Amusement and gaming machines; control apparatus and equipment all for the aforesaid goods; parts and fittings for all the aforesaid goods.
Community Trade Mark No 2368256
Filing date: 7 September 2001
Registration: 29 January 2003
OXO
Class 09: Game, entertainment, recreational and amusement machines and apparatus; video game machines and apparatus; gaming machines; fruit machines; amusement with prizes and skill with prizes machines; cabinets, controlling apparatus, software and upgrade and modification kits for the aforesaid goods; parts and fittings for all the aforesaid goods.
Class 40: Upgrade, modification and rebuild of gaming, entertainment and amusement machines and apparatus.
Class 41: Services for the provision of gaming, entertainment and amusement machines and apparatus; rental and leasing of gaming, entertainment and amusement machines and apparatus; advisory and consultancy services relating to gaming, entertainment and amusement machines and apparatus; operating of machines and apparatus at sites for gaming, entertainment and amusement purposes; arranging contests and competitions in relation to the playing of games with gaming, entertainment and amusement machines and apparatus; providing gaming, entertainment and amusement services on video and computer systems and via on-line internet and other network communications.
The trade marks are registered in the name of Electrocoin Automatics Limited ("Electrocoin"). The allegations of infringement relate to the trading activities of Coinworld Limited ("Coinworld") and its directors, Mr Thomas Evans and Mr Ernest Ingram. It is not disputed that Mr Evans and Mr Ingram have at all relevant times been actively involved in the conduct and management of the company's affairs. In the defence filed on behalf of all three defendants it is specifically admitted "that either or both of the second or third defendants personally procured and directed each of the acts of the first defendant of which complaint is made herein". The admission was made by amendment in October 2003. It removed the need for Electrocoin to prove that either or both of the individual directors were personally responsible for the allegedly infringing activities. With no separate position to defend, their exposure to liability falls to be regarded as concurrent and co-extensive with that of the company. 1
In accordance with the principles discussed in MCA Records Inc v Charly Records Limited [2001] EWCA Civ 1441 at paras 29 to 53 per Chadwick LJ and Standard Chartered Bank v Pakistan National Shipping Corpn (Nos 2 and 4)[2002] UKHL 43 at paras 35 —41 in the opinion of Lord Rodger of Earlsferry.
The claim for infringement relates to the marketing of 'amusement with prizes' ("AWP") gaming machines of the kind conventionally referred to as "fruit machines": these are the BEAR X and BIG BEN machines identified below.
The BEAR X machine has been advertised in promotional leaflets such as the one reproduced in Annex 1. An example of the machine is shown in Annex 2. The symbols and their sequence on the reel bands of the machine are as shown in Annex 3.
The BIG BEN machine has been advertised in promotional leaflets such as the one reproduced in Annex 4. A close-up of the area of the fascia under the word BEN appears in Annex 5.
Electrocoin contends that its Class 9 registrations for the trade mark BAR-X give it the right to prevent:
(i) use of the designation BEAR X in narrative form, as in the manner identified by pointer 1;
(ii) use of the designation BEAR X in artistically elaborated form, as in the manner identified by pointer 2;
(iii) use of the symbols BAR and X one above the other in the "win tables" on the front of the machine, as in the manner identified by pointer 3;
(iv) use of the symbols BAR and X one above the other in the alignments of reel symbols shown in promotional images as in the manner identified by pointer 4;
(v) use of the symbols BAR and X one above the other on the same reel, as in the manner identified by pointer 5;
(vi) use of the symbols BAR and X on adjacent reels, as in the manner identified by pointer 6;
and that its Class 9 registrations for the trade mark OXO give it the right to prevent:
(vii) use of the symbols O, X and O alongside one another in the alignments of reel symbols shown in promotional images, as in the manner identified by pointer 7;
(viii) use of the symbols O, X and O on adjacent reels, as in the manner identified by pointer 8.
Infringement of the registrations in Class 40 and Class 41 was alleged in the particulars of claim, but no claims to that effect were advanced at trial.
The defendants maintain that the terms BEAR X and BAR-X are not sufficiently similar to bring about consequences of the kind required for a finding of infringement. They further maintain that the symbols BAR, X and O lack the power to distinguish the goods and services of interest to Electrocoin from those of other traders when used in the context and manner which has given rise to complaint. They argue for two conclusions on the strength of that proposition. First, they contend that the rights conferred by registration of the trade marks BAR-X and OXO are not to any or any unacceptable degree engaged by their use of those symbols and so cannot be taken to have been infringed by such use. Secondly, they contend that the registrations in suit should be declared invalid because the trade marks do not possess the degree of distinctiveness required for protection by registration at national or Community level in relation to goods and services of the kind for which they are registered.
Electrocoin insists that these lines of defence are unsustainable on a proper application of the law to the facts. It adheres to the position that the question whether the trade marks BAR-X and OXO are validly registered should be answered in the affirmative, even if the question of infringement by use of the symbols BAR, X and O on the BEAR X and BIG BEN machines (and in advertising relating to those machines) is answered in the negative.
I do not doubt that the perceptions and recollections likely to be triggered by use of the relevant words and symbols are central to the opposing arguments, both on validity and on infringement. However, it is essential to bear in mind that a claim for infringement can fail for reasons that provide no or no sufficient justification for allowing a claim for invalidity to succeed. This point can easily be overlooked in a case such as the present, where it has been argued that the registrations in suit must either be invalid or not infringed. The prevailing view is that in order to prevent trade marks from being improperly registered, the grounds for refusal of registration should be applied independently of the defences that might be available to traders...
To continue reading
Request your trial
-
Henley Arch Pty Ltd v Henley Constructions Pty Ltd
...of any reason to suppose otherwise, as illustrative of what would be normal and fair: Electrocoin Automatics Ltd v Coinworld Ltd [2004] EWHC 1498 (Ch) at [21]. The objection under s 60 of the TM Act is not based on the requirement that the allegedly conflicting marks are substantially ident......
-
City Chain Stores (S) Pte Ltd v Louis Vuitton Malletier
...there seemed to be seeking to combine the two approaches. On the other hand, in Electrocoin Automatics Limited v Coinworld Limited [2004] EWHC 1498 (Ch) the court concluded at It appears to me that the implication of Article 5(5) of the Directive and the thrust of the guidance provided by t......
-
Taylor v Killer Queen, LLC (No 5)
...of any reason to suppose otherwise, as illustrative of what would be normal and fair: Electrocoin Automatics Ltd v Coinworld Ltd [2004] EWHC 1498 (Ch) at [21]. [20] The objection under s 60 of the TM Act is not based on the requirement that the allegedly conflicting marks are substantially ......
-
Monster Energy Company v Mixi Inc
...FCA 176; 33 FCR 302 Condé Nast Publications Pty Ltd v Taylor [1998] FCA 864; 41 IPR 505 Electrocoin Automatics Ltd v Coinworld Ltd [2004] EWHC 1498 (Ch) Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; 185 FCR 9 GAIN Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA......