No figure of fun
Robecca Davey runs through the reasons why use of a mark on children’s playthings was no laughing matter.  EWHC 118 (IPEC), Luen Fat Metal and Plastic Manufactory Ltd v Jacobs & Turner Ltd (t/a Trespass), IPEC, 29th January 2019.
 EWHC 118 (IPEC), Luen Fat Metal and Plastic Manufactory Ltd v Jacobs & Turner Ltd (t/a Trespass), IPEC, 29th January 2019
- Even where a mark has a low degree of inherent distinctiveness and makes an indirect allusion to the characteristics of the goods, this does not mean that it is devoid of any distinctive character
- The average consumer was identified as the person making the purchase, rather than the end user
The Claimant in this recent IPEC decision, Luen Fat Metal and Plastic Manufactory Ltd (LFMPM), is the proprietor of a UK trade mark registration for the series of marks FUNTIME, FUN TIME and FUN-TIME (the UK Mark), covering “games, toys and playthings; electronic games”, as well as an EU trade mark (EUTM) registered with an acquired distinctiveness claim, but with a note that “the trade mark was inherently distinctive” nonetheless. LFMPM alleged that the use of FUN TIME TOYS on toy products by Trespass (the Defendant) constituted infringement.
The IPEC decision
The Court initially assessed whether the Claimant’s UK Mark was inherently distinctive and, if not, whether it had acquired distinctiveness. It was held that, although the UK Mark had a low degree of inherent distinctiveness, because it made an indirect allusion to the characteristics of the goods, this did not mean that it was devoid of any distinctive character under s3(1)(c) of the Trade Marks Act 1994 (TMA). Because inherent distinctiveness was found, it was not necessary to consider acquired distinctiveness. The Court nevertheless confirmed that the evidence filed was sufficient to demonstrate that the UK Mark also had acquired distinctiveness. As a result, the UK Mark was declared valid.
The next issue for consideration was whether Trespass’s use infringed under s10(2) TMA. Notably, an initial claim under s10(1) TMA was dropped during the course of proceedings. First, it had to be established whether use “in relation to” the goods had taken place. Here, Trespass maintained that its use of FUN TIME TOYS was merely descriptive. However, the judge concluded that Trespass’s use would be taken by the average consumer as trade mark use.
The Court held that the way in which FUN TIME TOYS was presented on the packaging would be interpreted by the average consumer as being an indication of the supplier of the toys. Therefore, it was concluded that use had taken place. On this point, it is interesting to note that the Court held that the average consumer would be the adult making the purchase, rather than the child who would be the end user.
Question of confusion
On the question of likelihood of confusion, the IPEC held that the sign used by Trespass was visually, aurally and conceptually very similar. The appearance of TRESPASS on the packaging did not prevent the likelihood of confusion, even though it was accepted that TRESPASS was well known. As such, infringement under s10(2) TMA was established.
In view of the finding of infringement under s10(2) TMA, the claim under s10(3) was only briefly touched on, and the Court concluded that use of the UK Mark did establish reputation and that Trespass’s use gave rise to a “link” in the minds of the average consumers. As a result, the use would both cause detriment to the distinctive character of the UK Mark and take unfair advantage. Infringement under s10(3) TMA was, therefore, also established. The Court left open in this context whether use of an EUTM in one EU Member State was sufficient to establish a reputation in the EU for the purposes of Article 9(2)(b) of Regulation (EU) 2017/1001 by focusing solely on the UK mark.
This IPEC decision highlights the importance of conducting clearance searches in order to identify potential infringement risks, even for marks that are only intended to be used as part of sub-branding and may be highly allusive to the characteristics of a product or service.
Robecca Davey is a Chartered Trade Mark Attorney at Baker McKenzie
Trade Marks Attorney , Baker McKenzie LLP