No free ride for FreePrints
A mixed result gives an insight into the mobile context, says Joel Smith.  EWHC 713 (Ch), PlanetArt LLC & Another v Photobox Ltd & Another, 25th March 2020
With this decision, the High Court provided a reminder of the approach to determining whether descriptive terms have acquired distinctiveness, which is the global assessment applied to likelihood of confusion and the approach used under passing off. It also made interesting comments regarding the commercial context of mobile applications.
The Claimants had operated a mobile application on digital platforms such as Apple’s App Store since 2014. The application provides a photo-printing service under the name “FreePrints”. The Claimants used an icon to identify their application, consisting of a square shape with rounded corners. The interior was shaded light blue, and a slightly darker blue polka dot pattern was just visible. This square contained a simple drawing of a butterfly in white lines with hollow interiors. Beneath was the word “FreePrints”. The Claimants held a registered UK trade mark for a stylised image with the word FREEPRINTS beneath, and this image should be what is seen on a user’s mobile device once the application was installed.
The Defendants had launched a competing service in 2019 under the brand “Photobox Free Prints”, using an icon which also consisted of a light blue/turquoise background applied to a square with rounded corners, with a drawing in white outline over the top. This drawing was reminiscent of a pile of Polaroid photo prints. Once the application was downloaded, it would be presented on the user’s device as an icon with the words “Free Prints” beneath it (without the word “Photobox”). The Defendants also had a registered UK trade mark for PHOTOBOX FREE PRINTS that predated the Claimants’ trade mark.
Following an unsuccessful interim injunction application, the Claimants issued proceedings on the basis of trade mark infringement under s10(2) and s10(3) of the Trade Marks Act 1994 and passing off. They also sought an order that the Defendants’ registered trade mark for PHOTOBOX FREE PRINTS was invalid, on the grounds of bad faith.
In making his judgment, Mr Daniel Alexander QC initially saw the attraction of the Defendants’ position that the Claimants had clearly chosen highly descriptive terms in order to inform users of what their application did but could not now claim a monopoly over common English words. However, the Court ultimately found for the Claimants on some counts and for the Defendants on others.
The Court found significant aural and visual similarities between the Claimants’ trade mark and the Defendants’ icon, as well as some conceptual similarity. It noted that the Apple App Store guidelines required the application’s name to appear below the icon and held that in the context of a mobile application, the average consumer would expect the term below an application icon to have trade mark significance.
The Court noted that there was no requirement to show actual confusion or a change in consumer behaviour as a result of confusion; the question was whether there was a likelihood of confusion. The Court then applied the global appreciation test, taking into account the various features of each of the trade marks and the Defendants’ icon overall. The Court noted that distinctiveness was relevant to the global test and found that consistent use of the icon together with the words “FreePrints” by the Claimants needed to be taken into account. It found a likelihood of confusion within the meaning of s10(2).
The Court declined to find infringement in respect of two other signs used by the Defendants, which appeared at other stages of the customer experience: on the store page for their application, and as used in emails. Both included prominent placement of the word “Photobox”. This took the use outside the criteria for infringement, primarily due to the impact upon the origin function. The user would recognise that the parties offering the application were the Defendants where they had placed the word “Photobox” before “Free Prints”, and “Free Prints” would be considered descriptive as a result. The Court may have had in mind that, on mobile application stores, it is common for the name of the party offering the application to appear before a description of the application.
The Court found that the Claimants’ trade mark had acquired sufficient reputation to bring a claim and that consumers would link the trade mark and the Defendants’ icon. It also found that the extensive use of the Photobox icon would damage the distinctive character of the trade mark by impairing its origin function. Further, the Defendants had taken unfair advantage of the Claimants’ reputation – regardless of whether or not they intended to.
Conversely, this claim failed for the other two signs containing the word “Photobox”, due again to the dominant presence of that word.
Passing off and invalidity
The Court was satisfied that the threshold for a passing off claim had been met. The Claimants had acquired goodwill in the mark “FreePrints” when combined with the dominant features of their icon as a whole. However, the Court found no misrepresentation. In this case, the Defendants’ icon only appeared when the user had already selected and opted to download the application. In search results and on the application store page for the Defendants’ application, it was made clear that Photobox was the developer and that “Free Prints” was being used descriptively. Therefore, there was no misrepresentation (and consequentially no damage). The action to revoke the Defendants’ registered trade mark on the grounds of bad faith failed.
The case raised interesting points regarding the marketing of mobile applications and what impact this can have when considering trade mark infringement. It is common for mobile developers to use descriptive terms on app storefronts, given the small space available for them to advertise their applications to users. This case demonstrates that these terms can become distinctive when used with a distinctive icon, especially given the massive potential audience for digital applications. It also shows the importance for rivals aiming to displace an incumbent application that is protected by a trade mark to add distinguishing brand names to their application to avoid confusion.
- Mobile application stores and the way in which the user views marks of origin in the context of selecting and downloading applications can have a bearing on considerations of trade mark infringement
- Descriptive terms can become distinctive when used with a distinctive icon
- Those aiming to displace an incumbent application could add distinguishing brand names to their application to avoid confusion
Partner, Herbert Smith