GO ASK ALICE

KEY POINTS

Keeping a bank of evidence of trade mark use is important

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Even small-scale use of adjacent products and services can be enough to show use across a broader specification

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Similar branding in the same markets can be risky, even where the earlier mark may appear to be vulnerable for specific goods

This case concerns trade mark infringement of the word mark ALICE and a counterclaim for revocation. The Claimant traded as ALICE, selling equipment including amplifiers, mixing desks and timecode distribution amplifiers, and owns a UK trade mark for ALICE (the Alice Mark), filed on 21st December 2018 and registered on 22nd March 2019. The registration is in respect of various apparatus used for audio and sound recording, transmission or reproduction of sound or images, and signal mixing apparatus for use in radio and television broadcasting in class 9, as well as repair, maintenance and refurbishment of such equipment in class 37.

The First Defendant commenced its business in 2020 and, in 2021, it began advertising and making available for preorder a camera designed for use with a smartphone, under the mark ALICE CAMERA (the Alice Camera Sign). It advertised this product on its website, via various social media channels and at an exhibit at BOXPARK Shoreditch in London. In open correspondence to the Claimant, the Defendants accepted that the First Defendant infringed the Alice Mark under s10(2) of the Trade Marks Act 1994 (the Act), but denied that the mark was identical and counterclaimed for revocation under ss46(1)(a) and 46(1)(b) of the Act. Even if the mark were revoked, this would only take effect from 23rd March 2024. Therefore, the Defendants would still be liable for prior acts of infringement before the revocation date.

The Judge found that the Claimant’s evidence of sales invoices, product leaflets and reviews for its equipment fell within categories such as “signal-mixing apparatus” and “apparatus for recording or reproduction of sound or images” and applied a generous interpretation to uphold the whole class 9 specification. Invoices also substantiated use of class 37 services, showing repair, refurbishment, maintenance and installation work relating to the goods. This was the case even though the work was carried out by the owner of the Claimant’s company on a solo basis and the turnover was not particularly high. The Claimant conceded in closing that the Alice Camera Sign is not identical to the Alice Mark for the purposes of s10(1), leaving the Judge to conclude that the marks were not identical. The marks were, however, deemed to reach “the highest degree of similarity”.

“The marks were deemed to reach ‘the highest degree of similarity’”

In respect to goods, the Defendants admitted that the Alice Camera Sign had been used in relation to cameras, which are identical to “apparatus for recording transmission or reproduction of … images”, in respect of which the Alice Mark remained registered.

The Defendants did not file evidence in chief, but the Third Defendant filed a witness statement on behalf of all Defendants and was cross-examined on this. The Court rejected the Defendants’ evidence that their cameras had a different target audience than the goods for which the Claimant’s trade mark was registered, holding that there was a likelihood of confusion as a result of the Defendants’ activities. The Judge dismissed the counterclaim for revocation; the First Defendant infringed the Alice Mark contrary to ss10(1), 10(2)(a) and 10(2)(b) of the Act from the commencement of its business.

Naomi Jenkins is a Chartered Trade Mark Attorney and a Senior Associate at Boult Wade Tennant LLP
njenkins@boult.com

^{ILLUSTRATION: Shutterstock.com}

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