Kitfix Swallow Group Ltd v Great Gizmos Ltd

A plain-word Community trade mark protects the words in any graphical representation. Use of an identical sign for identical goods infringes, subject to applicable defences. Where confusion is relevant, the assessment is global and concerns confusion as to commercial origin, not mere association or non-origin similarity. A mark is not descriptive merely because it alludes to the nature of the goods. It may possess distinctive character inherently or through use. An Article 12 defence requires honest practices and fails where the use amounts to passing off.

The claimant manufactured craft and hobby kits and owned a Community trade mark for the word mark Sequin Art. The defendant imported and sold an identically named kit made by a Hong Kong supplier. The claimant alleged trade mark infringement and passing off. The defendant counterclaimed for a declaration that the mark was invalid on the grounds that it was non-distinctive and descriptive, and relied on the descriptive-use defence under the Community Trade Mark Regulation No. 40/94.

The court tried liability issues only. The central questions were whether the defendant’s sign was identical or similar to the mark, whether there was a likelihood of confusion, whether the mark was invalid, whether the Article 12 defence applied, and whether the claimant had established passing off.

1. Infringement. The defendant’s sign was in a different script but otherwise identical to the plain-word mark. The goods were identical to those for which the mark was registered. Accordingly, there was infringement under Article 9(1)(a), subject to the defences and the alternative claims.
2. Likelihood of confusion. The court adopted the usual global assessment through the eyes of the average consumer. The products’ similarities, their shared name and nature, the market context and the limited prominence of the manufacturers’ logos created a likelihood of confusion as to source, even though there was no hard evidence of actual confusion. Mere association or confusion unrelated to origin would not have been sufficient.
3. Validity. The mark was distinctive, either inherently or through use. The words were allusive rather than descriptive: they indicated the nature of the product without describing the product itself. The evidence of use and the absence of material competing use in the United Kingdom or European Union supported distinctiveness.
4. Article 12 and passing off. The descriptive-use defence failed because the use was not honest in relation to the legitimate interests of the trade mark owner and amounted to passing off. The claimant had goodwill attached to the mark, the defendant’s use was a misrepresentation likely to lead the public to believe that the goods came from the claimant, and damage followed readily.
5. Result. The infringement claim and passing-off claim succeeded. The counterclaim for invalidity failed. The judgment determined liability, leaving damages and consequential matters for later consideration.