Planetart LLC v Photobox Ltd & Anor

Factual and Procedural Background

By a claim commenced on 26 April 2019 under the Shorter Trials Scheme, the Claimants sought relief against the Defendants for alleged trade mark infringement and passing off related to app-based photo printing. The claim included revocation of one of the Defendants' UK trade marks on grounds of the Claimants' earlier rights and bad faith.

The Claimants operate a mobile application business branded "FreePrints" in the UK through four apps sharing the FreePrints branding. The claim focused primarily on the Defendants' use of the name "Free Prints" for their app, alleged to compete directly and to have adopted confusingly similar branding, risking dilution and trading off the Claimants' reputation.

The Defendants argued that "free prints" is a descriptive term commonly used in the trade and that their use was descriptive rather than brand-related. They contended the Claimants sought to monopolise ordinary English words, and that the Defendants sufficiently distinguished their branding. They denied confusion, attributing the lack of evidence of confusion to the descriptive nature of their branding.

The court acknowledged the competing policy interests: protecting trade mark rights versus preventing monopolisation of descriptive language. The resolution required close factual analysis.

Procedurally, the Claimants sent a letter of claim in April 2019, to which the Defendants initially did not respond. Proceedings were issued shortly thereafter. An application for an interim injunction was rejected in July 2019, with the Defendants giving undertakings limiting marketing. The claim was amended in November 2019 to include trade mark infringement.

Evidence was given by senior executives from both sides, including the Claimants' CEO and the Defendants' Managing Director and Chief Marketing Officer. The witnesses' evidence was largely uncontested on primary facts, though disputed on intent and branding choices. Some potential witnesses related to the Defendants' relationship with Apple were not called, but the court did not find this significantly prejudicial.

Legal Issues Presented

1. Whether the Defendants' use of "Free Prints" and associated branding infringed the Claimants' registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994.
2. Whether the Defendants' use constituted passing off by misrepresenting the origin of goods or services and causing damage to the Claimants' goodwill.
3. Whether the Defendants' registered trade mark "PHOTOBOX FREE PRINTS" should be declared invalid on grounds of bad faith and passing off.
4. Whether the Defendants' use of the term "Free Prints" was with or without due cause.

Arguments of the Parties

Claimants' Arguments

• The term "FreePrints" (as a single word) has acquired secondary meaning and denotes the Claimants' business to a significant part of the public.
• The Defendants have copied the Claimants' branding, including colour scheme, logo design, and marketing approach, causing likelihood of confusion and dilution.
• Evidence of actual confusion is limited due to Defendants' objection to survey evidence and the nature of consumer behaviour, but trade mark infringement does not require proof of actual confusion.
• The Defendants' use of the Photobox Free Prints Icon infringes the Claimants' registered trade mark and causes detriment to its distinctive character and unfair advantage.
• The Defendants' registered trade mark was applied for in bad faith, intending to prevent the Claimants from competing.
• The Defendants have not shown due cause for their use of the relevant signs.

Defendants' Arguments

• The term "free prints" is descriptive and commonly used to describe the supply of free photo prints; the Claimants cannot monopolise this ordinary English phrase.
• The Defendants have prominently used their own brand "Photobox" alongside "Free Prints," which is descriptive, thus distinguishing their services.
• There is no significant evidence of confusion because consumers treat "Free Prints" in the Defendants' branding as descriptive rather than brand-related.
• The Defendants' registered trade mark "PHOTOBOX FREE PRINTS" was filed in good faith, primarily to comply with Apple App Store requirements and to meet anticipated challenges, not to take unfair advantage of the Claimants' goodwill.
• The Defendants rely on the defence under section 11 of the Trade Marks Act 1994 that their use is descriptive and in accordance with honest practices.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by setting out the relevant legal principles governing trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994 and the tort of passing off, drawing extensively on established case law. The court emphasized the importance of assessing the likelihood of confusion from the perspective of the average consumer, considering visual, aural, and conceptual similarities, and the context of use.

The court acknowledged the descriptive nature of the words "free prints" but accepted that the Claimants' composite mark "FreePrints" and associated icon had acquired secondary meaning and goodwill in the UK market. The Defendants' use of the phrase "Free Prints" was recognized as partly descriptive but was challenged where it appeared in the position of a brand without adequate distinguishing features.

In comparing the marks, the court found significant visual and aural similarities between the Claimants' FreePrints Icon and the Defendants' Photobox Free Prints Icon, including the use of a turquoise background with white line drawings and similar stylized text. The court noted that the Defendants' other signs incorporated the prominent "Photobox" brand, which was sufficient to distinguish them and reduce the likelihood of confusion.

Regarding the likelihood of confusion, the court concluded that the use of the Photobox Free Prints Icon by the Defendants was likely to cause confusion with the Claimants' registered trade mark, considering the similarity of the marks, the identity of the services, and the reputation of the Claimants' mark. However, the other signs containing "Photobox" were not found to infringe due to the clear presence of the Defendants' brand and the descriptive nature of "Free Prints".

The court considered the absence of evidence of actual confusion but found this did not negate the likelihood of confusion for trade mark infringement purposes. It reasoned that actual confusion may be limited due to the context in which the apps are encountered, including the presence of the "Photobox" brand during app selection and use.

On the passing off claim, the court found that the Claimants had goodwill in the composite "FreePrints" mark and icon but not in the separate words "Free Prints". The Defendants' use of "Photobox" alongside "Free Prints" was sufficient to prevent misrepresentation. The court was not persuaded by the Claimants' arguments on absence of evidence of confusion and concluded that the Defendants had not engaged in passing off.

Regarding the Defendants' registered trade mark "PHOTOBOX FREE PRINTS", the court found no bad faith in the application, noting the legitimate commercial reasons for registration and the descriptive nature of "Free Prints". The mark was not liable to be invalidated on the grounds alleged.

The court emphasized the need to balance protection of trade mark rights against the legitimate use of descriptive language and accepted that the Claimants could not prevent genuine descriptive use of "Free Prints". However, the Defendants' use of the Photobox Free Prints Icon without adequate branding was not justified and infringed the Claimants' rights.

Finally, the court acknowledged that the Defendants had been somewhat aggressive in their branding approach, which contributed to the dispute, and suggested that the parties consider constructive proposals to resolve the matter with minimal further litigation.

Holding and Implications

a) The court held that the Defendants' use of the Photobox Free Prints Icon infringes the Claimants' registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994.

b) The claims for trade mark infringement relating to other signs and the passing off claim were dismissed.

c) The application to declare the Defendants' trade mark registration for "PHOTOBOX FREE PRINTS" invalid was dismissed.

The direct effect of this decision is that the Defendants must cease using the Photobox Free Prints Icon in its current form as it infringes the Claimants' trade mark rights. The decision does not prevent the Defendants from using the term "Free Prints" descriptively or alongside their own brand "Photobox". No new broad legal precedent was established beyond the application of existing principles to the facts.

The court encouraged the parties to engage in constructive discussions and possibly mediation to resolve remaining issues and minimize further litigation. The court also indicated openness to considering costs applications, noting that the Defendants' approach contributed to the dispute.