Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors

Keyword bidding is use of the searched trade mark, distinct from the consequences of the resulting advertisement. Infringement depends on whether the advertisement enables normally informed and reasonably attentive internet users to determine, without difficulty, whether the goods originate from the trade mark proprietor or an unconnected third party.

Honest concurrent use may tolerate inevitable confusion where two traders have honestly used the same or closely similar marks and the mark indicates both businesses. It does not permit a defendant to bid on the claimant’s mark where the defendant has never used that mark as its own and the mark remains an exclusive indication of the claimant. A substantial increase in bidding which exacerbates confusion and encroaches on goodwill is not honest concurrent use.

The claimant, an online bathroom retailer, sued the defendants for trade mark infringement arising from the first defendant’s bidding on keywords incorporating the claimant’s “Victoria Plum” and “Victoria Plumb” marks. The resulting advertisements used signs including “Victorian Plumbing” and “Victoria Plumbing”. The claimant also pursued related claims concerning keyword advertising and the second defendant’s alleged joint liability.

The defendants relied principally on honest concurrent use, and alternatively on estoppel and statutory acquiescence. They counterclaimed for passing off based on the claimant’s bidding on “Victorian Plumbing”. The central issues were whether the advertisements failed the Google France origin-function test, whether honest concurrent use applied to bidding on another trader’s mark, and whether the second defendant was jointly liable.

1. Trade mark infringement. The first defendant’s bidding on “Victoria Plum”, “Victoria Plumb” and immaterial variants constituted use of signs identical or materially similar to the claimant’s marks. The relevant use was distinct from the resulting advertisements, but infringement required application of the origin-function test in Google France and Interflora.
2. The advertisements, which prominently used “Victorian Plumbing” or “Victoria Plumbing” without indicating an absence of connection, did not enable normally informed and reasonably attentive internet users to identify the commercial origin of the goods without difficulty. The similarity of the signs, identical goods and services, the claimant’s enhanced distinctive character and unusually high click-through rates established confusion on a substantial scale.
3. Honest concurrent use. The doctrine may apply to closely similar marks. It tolerates inevitable confusion where honest long-standing use means that a mark indicates the goods or services of two entities, but the defendant must not exacerbate confusion beyond the inevitable level or encroach on the claimant’s goodwill. It cannot justify use of the claimant’s mark where the defendant has never used it as its own and accepts that it exclusively denotes the claimant. The first defendant’s substantial increase in keyword expenditure from late 2012, its knowledge of the similarity, the absence of a satisfactory explanation and the high click-through rates showed dishonest use.
4. Estoppel and statutory acquiescence failed. The claimant made no representation that the first defendant was entitled to bid on its marks, and the first defendant had no earlier right in those marks for the purposes of Trade Marks Act 1994, section 48.
5. The claim against the second defendant failed because his general managerial responsibility and high-level knowledge did not establish assistance pursuant to a common design as required by Sea Shepherd UK v Fish & Fish Ltd.
6. The counterclaim for passing off succeeded. Users searching for “Victorian Plumbing” were likely to expect the first defendant’s website, and the claimant’s advertisements created a misrepresentation with a likelihood of damage.

First-instance decision. No prior appellate decision is stated in the judgment.