ALM Manufacturing v ALM IMP EX Ltd

For trademark infringement under Trademarks Act 1994, the goods themselves need not bear the protected mark. It is sufficient that the mark is used in promotional material in the course of promoting or attempting to promote goods within the classes covered by the registration.

The use of the mark with additional descriptive words does not prevent infringement where the protected letters remain prominent. Actual sales, knowledge of the trademark, intention to infringe, and differences between the parties’ wider product ranges are immaterial where the promotional material concerns goods within the protected classes. Summary judgment is appropriate where the pleaded defences disclose no realistic defence.

The claimants, comprising a company and its owners, alleged trademark infringement and passing off after the defendant company used the letters “ALM” prominently in an advertisement, correspondence, letterhead and business card promoting gardening and household goods. The claimants had obtained interim injunctive relief.

The defendants argued that their goods bore another name, that “ALM” was used with additional words, that no relevant sales had occurred, that the infringement was innocent, and that their product range differed. The court considered whether those matters disclosed a reasonable defence to the claims and whether the action should proceed to trial.

1. Summary judgment granted. The defendants’ purported defences were struck out, and judgment was entered for the claimants on the trademark infringement and passing-off claims.
2. Under s.10 of the Trademarks Act 1994, infringement does not require the defendant’s goods to be marked with the protected trademark. Use of the protected letters in the course of promoting or attempting to promote goods within the registered classes is sufficient.
3. The use of “ALM” together with terms such as “International Trading” or “Imp Ex Limited” did not avoid infringement. The relevant consideration was the prominent use of the protected letters in promotional literature.
4. Actual sales were unnecessary. The infringement arose from use of the protected term in promotional activity directed towards sales of goods within the protected classes.
5. The defendants’ lack of knowledge, absence of an intention to infringe, and the fact that the parties’ wider product ranges differed did not constitute defences. The relevant overlap was between the goods promoted by the defendants and the protected classes, not between the parties’ entire product ranges.
6. Nothing in the evidence disclosed a realistic defence or a reason for trial. The defendants were ordered to pay the claimants’ costs, summarily assessed at £34,990.05. The requested order requiring a change of company name was omitted because the name had already been changed.

The judgment is a first-instance decision. It records that interim injunctive relief had previously been granted by Mann J and continued by Norris J.