Wasabi Frog Ltd v Miss Boo Ltd & Anor

On an application for an interim injunction, the claimant must show a triable issue, that damages would not provide adequate compensation, and that the balance of convenience favours relief. In a passing-off claim, mere confusion is insufficient: the conduct must be calculated to cause a substantial number of relevant customers to buy the defendant’s goods believing them to be the claimant’s. Trade mark infringement turns on the statutory likelihood of confusion, including association. Similarity between competing online trading names may strongly support that likelihood where the distinctive element is prominent and the businesses, markets and customers overlap. The court may grant an injunction where the claimant’s case is strongly arguable and the defendant can be adequately compensated by damages for changing its trading name.

Wasabi Frog Limited, an online retailer trading under the marks BOOHOO, BOOHOO.COM and BOO, sought interim injunctive relief against Miss Boo Limited and Gulfraz Mohammed. The defendants operated a competing online women’s fashion business using MISS BOO and missboo.co.uk.

The application alleged Community trade mark infringement and passing off. The central issues were whether there was a triable issue and a likelihood of confusion or association, whether damages were adequate for either side, and where the balance of convenience lay.

1. The application was for interim injunctive relief. The claimant had to establish a triable issue, demonstrate that damages would not be an adequate remedy, and show that the balance of convenience favoured an injunction.
2. For passing off, the essential elements were goodwill or trading reputation, a misrepresentation calculated to lead prospective customers or consumers to buy the defendant’s goods as the claimant’s, and actual or likely damage. Mere confusion was insufficient. The defendants’ knowledge of the claimant’s business did not itself establish the claim, but their conduct had to be judged objectively.
3. For Community trade mark infringement under Article 9(1)(b) of the Council Regulation of 20 December 1993 on the Community Trade Mark 40/94/EEC, the relevant question was whether the signs and goods or services were identical or similar so that there was a likelihood of confusion, including association. The registration of BOO meant that lack of prior use of BOO was not a defence at this stage.
4. The claimant had substantial reputation and goodwill in BOOHOO and BOOHOO.COM, although the position concerning BOO was less established. The prominent shared element, “boo”, the use of “Miss” with that element, the competing goods and customer base, and evidence of actual or likely confusion made the infringement case strongly arguable. The passing-off case was more difficult but remained well arguable. Website layout similarities were not given material weight.
5. Damages would not adequately protect the claimant against possible loss of business and harm to reputation, particularly given the defendants’ limited assets. Damages were likely to be adequate for the defendants because they could continue trading under a different name, retaining their unbranded stock. The balance of convenience therefore favoured the injunction, subject to an adequate cross-undertaking in damages.