Luen Fat Metal and Plastic Manufactory Ltd v Jacobs & Turner Ltd trading as Trespass
| Jurisdiction | England & Wales |
| Judge | Mr. Recorder Douglas Campbell |
| Judgment Date | 12 December 2018 |
| Neutral Citation | [2019] EWHC 118 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No: IP-2017-000172 |
| Date | 12 December 2018 |
[2019] EWHC 118 (IPEC)
Mr. Recorder Douglas Campbell QC
(sitting as a High Court Judge)
Claim No: IP-2017-000172
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Mr. Jonathan Gale of Counsel, instructed by Excello Law, appeared for the Claimant
Mr. Jim Cormack, Solicitor Advocate of Pinsent Masons LLP, appeared for the Defendant
Hearing date: 12 December 2018
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic. ………………………..
Mr. Recorder Douglas Campbell QC:
Introduction
The Claimant is the owner of UK trade mark registration no. 2 132 000, which is for a series of 3 word marks: FUNTIME, FUN TIME, and FUN-TIME. The filing date is 7 May 1997 and the registration is in respect of “Class 28: Games, toys and playthings; electronic games”.
The Claimant is also the owner of EU trade mark registration no. 806281, for the word FUNTIME, which was filed on 21 April 1998 and is registered for the same goods in class 28. The EU registration includes a note that “The trade mark was inherently distinctive, but evidence was submitted to show that, by the date of application, the mark has in fact acquired a distinctive character as a result of the use made of it”.
Neither side suggested that anything turned on the presence of 3 marks in the UK registration, nor that the result should be different on any point as between the UK and EU marks. Most of the argument was in fact directed to the UK mark, and the UK statutory provisions. I shall adopt the same approach in this judgment, save where otherwise appears.
The Claimant alleges that the Defendant's use of a number of signs infringed its marks. Here are two examples of the use complained of (shown larger in Annex 1):
The details of the use are slightly different, although the difference only becomes obvious on a close inspection (much closer than the above representation permits). In the example on the left, the words “FUN TIME TOYS” appear just under a row of stars. In the example on the right, the words “FUN TIME TOYS” still appear under a row of stars but this time they appear above the words “VALUE OUTDOOR LIVING”. Again, neither side suggested that anything turned on these extra words and so I will ignore them. By contrast the Defendant did rely on the appearance of the word “TRESPASS”, this being the Defendant's own mark. This can be seen in the top right of both examples given above.
It will already be apparent, and will become even more apparent, that the task of writing this judgment has been made considerably easier by the realistic concessions made during the hearing by both sides' legal representatives. I am grateful to both sides for doing so. This meant that the trial was completed in a single day rather than the 1 1/2 days allotted to it.
The use complained of has now stopped although the Defendant did not stop immediately. In particular the Claimant wrote to the Defendant complaining of such use on 5 th June 2017. The Defendant replied on 3 rd July 2017 saying that it would place a sticker over the offending mark, but it was still offering the goods complained of in their original form (ie without any such stickers) in at least its Castleford store on 17 th–20 th July. Furthermore the Defendant has not offered any form of undertaking to refrain from such use in future.
The issues to be decided
By Order of HHJ Hacon dated 9 th April 2018, the issues to be decided are as follows:
1) Whether the Marks are devoid of distinctive character within the meaning of section 3(1)(b) of the Trade Marks Act 1994 (the Act) or whether they consist exclusively of signs which serve in trade to designate the kind, quality, intended purposes or other characteristics of the goods for which the Marks are registered within the meaning of Section 3(1)(c) of the Act.
2) If so, whether the Marks have acquired distinctiveness through use for the purposes of the proviso to section 3(1) of the Act.
3) Whether the Marks should be declared invalid.
4) Whether the Defendant's use of the words Fun Time as complained of by the Claimant constitutes infringing use within the meaning of Section 10 of the Act, taking into account the manner in which the words are displayed.
5) Whether the Marks have a reputation in the UK for the purposes of Section 10(3) of the Act.
6) Whether the Defendant's actions in using the words Fun Time as complained of are such as to take advantage of or be detrimental to the reputation of the Marks without due cause within the meaning of Section 10(3) of the Act.
The witnesses and their evidence
On behalf of the Claimant I heard oral evidence from Mr Alex Kenyon, Director of Padgett Bros A to Z Limited (“Padgetts”), the sole agent and distributor for the Claimant for the UK and Ireland since 1994, and from Mr Malcolm Naish, Managing Director of Lema Publishing.
Mr Kenyon gave evidence about the Claimant's use of its FUNTIME mark in relation to a range of toys, which he said the Claimant had manufactured for at least 29 years. This was intended to support the Claimant's case on issue 2 (ie “the proviso”). In its skeleton for the trial, the Defendant criticised the adequacy of this evidence. That in turn prompted an application by the Claimant at the outset of the trial for permission to adduce more evidence of such use. I rejected that application for reasons I gave at the time: essentially this evidence should all have been given long ago if it was to be relied upon. Mr Kenyon also expressed his view that the Defendant's products might not comply with relevant safety procedures to allow them to be sold in the UK, although it became apparent in cross-examination he had no grounds for this.
In closing the Defendant submitted that Mr Kenyon was not a good witness, for 2 reasons. First, because he was dogmatic; secondly, because his evidence was calculated to advance the position of the Claimant. As an example of the latter the Defendant referred to Mr Kenyon's views about the safety of the Defendant's products.
I agree with the first criticism. I also agree with the second criticism up to a point. Specifically I agree that Mr Kenyon wanted to argue the Claimant's case. In addition to the groundless point about safety Mr Kenyon repeatedly went out of his way to try and introduce the evidence which I had previously ruled inadmissible. I am sure this was deliberate. However it was not put to Mr Kenyon that he was lying about any factual matters within his knowledge, and in any event I do not think that he was.
Mr Naish's company publishes a toy industry specialist trade magazine called Toys'n'Playthings (“TnP”). He gave evidence about his own knowledge of the Claimant's FUNTIME mark, and the Claimant's advertisements in TnP. Mr Naish was specifically asked about the extent to which whether members of the public were aware of the FUNTIME brand. His answer was “I can't really say it's a well known preschool brand”, and when asked for clarification he added “who knows what is in the mind of another?” As the Defendant pointed out, these answers meant that his evidence did not take the Claimant very far but the Defendant accepted (as do I) that he was a straightforward witness.
On behalf of the Defendant I heard evidence from Mr Afzal Khushi, who has been a Director of the Defendant for approximately 35 years, and Mr Michael Kent, a product designer employed by the Defendant.
Mr Khushi gave evidence about the Defendant's TRESPASS brand. He emphasised that the toy products complained of were a very minor part of the Defendant's product offering as a whole, which generally consisted of outdoor equipment and clothing. His cross-examination focussed on his statement that
“The descriptive wording ‘fun time’ was added on our packaging as we merely wanted to emphasise, in a playful way, that using our products could result in an enjoyable time”: see his paragraph [4].
The Claimant submitted that Mr Khushi was lying about the Defendant's reasons for adding the word FUNTIME, and that this addition was clearly made with the intention of taking advantage of the Claimant's mark. I reject these submissions, which I do not think were ever actually put to Mr Khushi. In my view Mr Khushi was simply trying to argue the Defendant's case in much the same way as Mr Kenyon had tried to do for the Claimant, merely less dogmatically.
Mr Khushi did not claim to know, or to have investigated, who had actually added, and/or approved the addition of, these words to the Defendant's packaging. Thus insofar as subjective intention matters, there is no evidence from the Defendant as to whose subjective intention it was to add these words, nor as to what result that person was trying to achieve.
Although Mr Kent was a product designer, he did not give any evidence about product design. His evidence was restricted to his involvement in the restickering campaign. He was a fair witness but his evidence was not mentioned in closing submissions.
I will address some more parts of the evidence in more detail in the relevant context, below.
Issue 1 Whether the Marks are devoid of distinctive character within the meaning of section 3(1)(b) of the Trade Marks Act 1994 (the Act) or whether they consist exclusively of signs which serve in trade to designate the kind, quality, intended purposes or other characteristics of the goods for which the Marks are registered within the meaning of Section 3(1)(c) of the Act .
The Defendant realistically accepted that in the circumstances of this case, its argument...
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Luen Fat Metal and Plastic Manufactory Company Ltd v Funko UK, Ltd
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