Jadebay Ltd & Ors v Clarke-Coles Ltd (t/a Feel Good UK)

Use of an online product listing may constitute trade mark use where the listing presents the goods as being supplied or manufactured by the trade mark proprietor. The court must assess the sign in its full commercial context, including how it appears to the average consumer and the information available through the listing.

For infringement under section 10(2) of the Trade Marks Act 1994, a high degree of similarity, identical goods and the characteristics of the relevant purchasing public may establish a likelihood of confusion even without evidence of actual confusion. A claim under section 10(3) requires reputation among a significant part of the relevant public. Passing off requires goodwill, a misrepresentation likely to deceive a substantial number of customers, and damage.

The claim concerned aluminium flagpoles sold through Amazon.co.uk. The claimants created listings for their DesignElements-branded flagpoles. The defendant used those listings to sell differently designed flagpoles branded Feel Good UK, while the listings stated that the goods were “by DesignElements”.

The claimants alleged trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, and passing off in respect of sales before registration of the trade mark. The central issues were whether the defendant had used the sign, whether that use created a likelihood of confusion, whether the mark had the necessary reputation, and whether the conduct constituted passing off and caused damage.

1. The defendant used the sign “DesignElements” in the course of trade. The words appeared whenever the products were presented to consumers as being “by DesignElements”. The listing process showed that this description referred to the stated brand or manufacturer, rather than merely to the seller who created the listing. Offering and exposing the defendant’s goods for sale in that manner fell within section 10(4)(b) of the Trade Marks Act 1994.
2. The sign was not identical to the registered device mark because the mark contained a distinctive font, a blue flag device and a space between the words. It was nevertheless highly similar. The words, letters and order were the same, and the sign was aurally and conceptually identical to the mark.
3. There was a likelihood of confusion under section 10(2). The relevant average consumer was a considered purchaser of a utilitarian and relatively niche product, likely to examine the listing information and customer reviews. The goods were identical in use, the sign was highly similar to the mark, and consumers could believe that the defendant’s product came from, or was economically linked to, DesignElements. The absence of reported actual confusion did not outweigh those factors.
4. The section 10(3) claim failed. Although each sale could contribute to reputation, the evidence did not establish that the mark was known by a significant part of the relevant public. The claimants had not proved the required reputation in the United Kingdom.
5. The passing-off claim succeeded for sales before 18 February 2013. The claimants had more than trivial goodwill associated with the Sign. The listings represented that the goods were DesignElements products, but purchasers received the defendant’s differently designed goods. A substantial number of customers were likely to be deceived, and the diverted sales caused damage.
6. The claimants were entitled to an injunction and damages of £25,359.75. No additional award was made for alleged price reductions because the evidence did not establish that those reductions were wholly attributable to the defendant or provide a reliable measure of loss. Interest, costs and consequential orders were reserved for further submissions.