Planetart LLC (incorporated under the laws of Delaware, USA) v Photobox Ltd

JurisdictionEngland & Wales
JudgeMr Daniel Alexander
Judgment Date25 March 2020
Neutral Citation[2020] EWHC 713 (Ch)
CourtChancery Division
Docket NumberClaim No: IL-2019-000046
Date25 March 2020

[2020] EWHC 713 (Ch)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES

INTELLECTUAL PROPERTY LIST (ChD)

INTELLECTUAL PROPERTY

SHORTER TRIALS SCHEME

Before:

Mr Daniel Alexander QC

Sitting as a Deputy Judge of the Chancery Division

Claim No: IL-2019-000046

Between:
(1) Planetart LLC (incorporated under the laws of Delaware, USA)
(2) Planetart Limited
Claimants
and
(1) Photobox Limited
(2) Photobox Free Prints Limited
Defendants

Mr Douglas Campbell QC (instructed by Taylor Wessing LLP) for the Claimants

Mr Tom Alkin and Ms Kyra Nezami (instructed by Jensen & Son) for the Defendants

Hearing dates: 14–17 January 2020

APPROVED JUDGMENT

Mr Daniel Alexander QC

INTRODUCTION

1

By this claim, commenced on 26 April 2019, in the Shorter Trials Scheme, the Claimants seek relief against the Defendants in respect of alleged trade mark infringement and passing off arising out of the use of marks relating to app-based photo printing. There is also a claim for revocation of one of the Defendants' UK trade marks based on the Claimants' alleged earlier rights and bad faith.

Outline of the case

2

The Claimants seek to protect the name and branding of their mobile application (or “apps”) business, which is branded “FreePrints” with certain other insignia, and is operated in the UK through four apps, all branded with FreePrints-related names. The claim is primarily directed against use by the Defendants of the name “Free Prints” for their app, which it is said has been targeted to compete directly with the Claimants' business and against certain other aspects of the branding of the Defendants' business. The Claimants, broadly, contend that the Defendants have illegitimately copied the Claimants' business and its presentation to the public to the extent of adopting readily confusable branding which trades off their reputation and risks diluting their brand. They say that the absence of evidence of actual confusion is explicable by the fact that (a) it would be unlikely to come to light and (b) the Defendants objected to the Claimants trying to obtain evidence of confusion by a survey, thereby rendering such evidence harder to obtain. They contend that, in any event, the trade mark claims are unaffected by this absence of evidence.

3

The Defendants, broadly, contend that, having chosen a mark for their business “FreePrints” in respect of apps for ordering free prints and supply of free prints, the Claimants can hardly complain that a rival trader has chosen the term “free prints” to describe its own business of providing similar apps and supplying free prints, especially when others also use the term “free prints” to describe the supply of free prints. They contend that this is all they are doing and that they have adequately distinguished. They submit that the case is really an illegitimate attempt on the part of the Claimants to monopolise ordinary English words and features of design to describe their business to make it harder for a newcomer to compete and that the branding they have chosen is sufficiently different not to give rise to grounds for complaint. They say that the reason for there being either no or very limited evidence of confusion is because there is none. They say that this is not surprising because, even if consumers treat the term “FreePrints” in the Claimants branding as a brand, they do not treat the words “Free Prints” in the Defendants' branding as such but as a description of the Defendants' goods and services.

4

The Defendants' position has prima facie appeal. Where a trader has chosen a brand which describes what the business does and others want to use that term to describe a business of the same kind, the first trader may be aggrieved that a newcomer is using its branding. However, the second trader may be equally aggrieved that the first trader has appropriated words of the English language as branding for its business in the first place. In such cases, both the law of trade mark infringement and the law of passing off (in somewhat different ways) provide a reasonable degree of latitude to a second trader. There are two reasons for this. One is broad policy — to avoid monopolisation of elements of language which others may wish to use to describe what they are offering. The other is because consumers are taken to be sufficiently astute to be able to discriminate between use of a term as a brand and use of the same or similar term in a descriptive sense, because of the immediate context of such use. In such cases, the similarity of the term in question means that the likelihood of confusion as to trade origin is low because the term in question in the defendant's branding does not denote trade origin at all. While that is a characterisation of the general legal principle, as I outline in greater detail below, there is no general answer in law to that question and resolution requires close attention to the specific facts.

5

There are several complicating factors in this case. First, the Claimants contend that, despite its descriptive connotation the term “FreePrints” (as a single word) has come to denote specifically the Claimants' business and that, whatever the position before the Claimants started trading, by April 2019 when the Defendants started the acts complained of, the Claimants had effectively traded themselves into exclusivity of use of that term or a term very similar to it. Second, the Claimants contend that the Defendants have gone further than merely using the words “free prints” descriptively and, by a combination of features of their branding (including, in particular, the colour scheme and logo design) they have infringed the Claimants' registered trade mark (which is for a specific design of app icon and not the word “FreePrints” alone). Third, subject to a debate discussed in detail below, there is either no or very limited evidence of any actual confusion having occurred during the period for which the apps have been trading side by side and limited evidence of any actual impact of the Defendants manner of trading on the Claimants' business.

Procedural history

6

The Claimants' solicitors sent a letter of claim dated 18 April 2019 to which the Defendants did not respond initially. Proceedings were issued on 26 April 2019 and an application was made for an interim injunction which was rejected in July 2019 with the Defendants giving limited undertakings until trial. These undertakings (broadly) limited the marketing of the Defendants on the Apple App Store and kept them from launching in the Android/Google Play online store in the interim. The claim was later amended, in November 2019, to include trade mark infringement.

EVIDENCE AND WITNESSES

7

Senior executives from both the Claimants and the Defendants gave evidence and were cross-examined. There was also evidence of more minor witnesses whose evidence was not challenged and which do not matter greatly.

8

The main witness for the Claimants was Mr Roger Bloxberg, the CEO of both of the Claimants. He described the history of the Claimants' business and the use of the marks in issue. His evidence was clear and comprehensive and as to the facts was not seriously challenged.

9

The main witness for the Defendants was Mr Christian Woolfenden, the Managing Director of both Defendants. He described the history of the Defendants' business so far as relevant, the genesis of the apps and marks in issue and described the way in which the Defendants' used the marks and why. Save as to the reasons for adoption of the marks used by the Defendants and the extent to which the Defendants had copied and were targeting the Claimants, intending to deceive or free ride, his evidence as to the primary facts was also not seriously challenged. As to that, he was the primary decision maker with respect to the choice of name (but not design of the apps). It was said that he had not been candid about the reasons why the branding adopted by the Defendants for the apps in question had been chosen and that the branding had been designed to take advantage of the goodwill and reputation of the Claimants' marks. Overall, he gave his evidence in a somewhat casual manner, but nonetheless I found him to be a straightforward, if somewhat self-confident, witness. He underplayed the extent to which the Defendants' business was specifically targeting the Claimants' business as shown by the manner in which he addressed the various market research documents, but I did not find him to be dishonest.

10

His evidence was supported by Mr Mark Singleton, the Chief Marketing Officer of the Defendants. The Claimants' counsel requested that he was not in court while Mr Woolfenden gave his evidence on the basis that he was said to be a corroborating witness. That was not materially resisted by the Defendants' counsel and, with some reluctance, given the need for open justice, I agreed to that course.

11

In the event, his evidence was broadly the same as that of Mr Woolfenden, although some aspects of his evidence were not wholly satisfactory. For example, despite being presented with compelling evidence that the design of the Defendants' App Store layout was in certain respects copied from the Claimants' he denied this and originally maintained that the similarities were co-incidental. Although he was not directly responsible for the design, the similarities are such that I found this evidence hard to credit. Ultimately he was driven to concede that there was a chance that it might have been copied and in this part of his evidence he was visibly uneasy in the witness box. Also, Mr Singleton had originally...

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1 firm's commentaries
  • Logos Sufficient To Distinguish Descriptive Word Marks
    • United Kingdom
    • Mondaq UK
    • 18 July 2022
    ...relation to an app comprising a logo and the words 'Free Prints' in a case in 2020 (Planetart LLC and anor v Photobox Limited and anor [2020] EWHC 713 (Ch)). In that case, Photobox were found to infringe Planetart's device trade marks, but the action failed in relation to passing off, in la......

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