Electrocoin Automatics Ltd. v Coinworld Ltd & Ors

Trade mark validity and infringement are distinct inquiries. A mark must be assessed as a whole, by reference to the goods or services and the perceptions of the average consumer. Traditional game symbols used on fruit-machine reels and win tables may be origin-neutral and descriptive, rather than trade mark use. Infringement requires use capable of affecting a protected trade mark function, including the guarantee of origin. For reputation-based infringement, a mere mental association is insufficient: the link must be capable of producing the required advantage or detriment. Descriptive use may also be protected under Article 6(1)(b) where it accords with honest commercial practices.

Electrocoin owned United Kingdom and Community trade mark registrations for BAR-X and OXO in relation to gaming and amusement machines and related services. It alleged that Coinworld and its directors infringed those marks by marketing BEAR X machines and by using BAR, X and O symbols on machine reels, win tables and promotional material.

The defendants challenged the validity of the registrations and denied infringement. The court considered the statutory and Community-law grounds of invalidity, the principal infringement provisions, and the descriptive-use defence. The central issues were whether the marks were distinctive and whether the defendants’ uses functioned as indications of trade origin.

1. Validity. The BAR-X and OXO registrations were not shown to be invalid under sections 3(1)(b), (c) or (d) and 47(1) of the Trade Marks Act 1994, or under the corresponding Community provisions. The grounds of invalidity had to be considered independently, and a failure to establish infringement would not itself justify invalidity.
2. The marks had to be examined as wholes, without excision or dismemberment, by reference to the relevant goods and services and the perceptions and recollections of the reasonably well-informed, reasonably observant and circumspect average consumer. BAR-X had acquired distinctive character as a trade-origin indication by November 1994. The evidence did not establish that OXO was customary or descriptive to the necessary extent in August 2000.
3. The repeated use of BAR, X and O as traditional fruit-machine symbols did not deprive BAR-X or OXO of validity. In that context the symbols were likely to be perceived as origin-neutral game integers. That conclusion did not extend automatically to every possible symbol or context.
4. Infringement. “Using in the course of trade” was a qualifying requirement, but the relevant question was whether the use was liable to affect a protected trade mark function. Use for purely descriptive purposes did not do so. Article 5(2) applied whether the goods or services were identical, similar or dissimilar.
5. BEAR X was sufficiently distinguishable from BAR-X for there to be no likelihood of confusion. No relevant advantage or detriment under Article 5(2) was established. The BAR, X and O symbols in matrices, promotional images and reel alignments were not used to distinguish Coinworld’s machines. They were conventional game symbols or randomised alignments, and therefore did not constitute the relevant trade mark use.
6. In any event, the defendants’ use of the symbols was in accordance with honest practices in industrial or commercial matters and fell within Article 6(1)(b). The claims for invalidity and infringement were dismissed.

First-instance decision. No earlier decision in the same proceedings is stated.