Coreix Ltd v Coretx Holdings Plc & Ors

Infringement under Trade Marks Act 1994, section 10(2), depends on the global assessment of the relevant circumstances. Identity of services, visual, aural and conceptual similarity, distinctive character and imperfect recollection may establish a likelihood of confusion even where the average consumer pays a high degree of attention. Actual confusion is not required, but evidence of it may support the conclusion.

For section 10(3), dilution requires a change, or serious likelihood of change, in the economic behaviour of the average consumer. Acquiescence and estoppel cannot provide a defence to national trade mark infringement, although they may be available in passing off. Mere inaction or continued commercial dealings do not ordinarily amount to encouragement, representation or reliance.

The claimant owned the registered word mark COREIX for telecommunications and computer services. The defendants used CORETX, a related logo and associated domain names, and sought to rely on acquiescence and estoppel arising from the claimant’s knowledge of earlier use of a coreTX mark and the parties’ continuing commercial dealings.

The claimant alleged infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, passing off, and invalidity of the defendants’ CORETX registration. The central issues were likelihood of confusion, dilution, tarnishment, free-riding, due cause, the availability of equitable defences, and the validity of the defendants’ registration.

1. Trade mark infringement under section 10(2). The defendants’ word and logo signs were used for identical services. The average consumer was an experienced business user who paid a high degree of attention, but this did not eliminate the possibility of imperfect recollection. COREIX and CORETX were highly visually and aurally similar. Their conceptual similarity also supported the claimant’s case if consumers analysed the marks into elements. The COREIX mark had substantial inherent and acquired distinctive character. The claimant therefore established a likelihood of confusion. Actual confusion was not a prerequisite, but the evidence of confusion at a shared data centre and trade shows supported the conclusion.
2. Section 10(3). The claimant’s mark had a reputation in the United Kingdom and the defendants’ use created the necessary link. The claimant proved a change in the economic behaviour of the average consumer for the purposes of dilution. Tarnishment was not established because the evidence did not show that services supplied under the complained-of marks were of poor quality. Free-riding was not established: there was no evidence of subjective intention to exploit the claimant’s reputation, nor of an objective effect enabling such exploitation.
3. Equitable defences. Following Marussia v Manor [2016] ETMR 32, acquiescence and estoppel could not operate as a defence to the trade mark claim, although they could be relevant to passing off. In any event, the defences failed on the facts. The claimant’s inaction did not amount to encouragement or representation; the defendants relied on their own assessment that CORETX did not infringe; the earlier coreTX use differed materially from the later group-wide use; and continued business dealings did not establish reliance or acquiescence.
4. Passing off and validity. Goodwill, misrepresentation and damage followed from the findings on the trade mark claim. The passing-off claim succeeded. The defendants’ registration was invalid under sections 5(2), 5(3) and 5(4) of the Act. The CORETX domain names also infringed and amounted to passing off. There was insufficient evidence to find infringement by the fifth defendant during its short period using the name Coretx Media Limited.

The action succeeded under sections 10(2) and 10(3), and in passing off. The acquiescence and estoppel defences failed, and the third defendant’s registered trade mark was invalid.