Luen Fat Metal And Plastic Manufactory Ltd v Jacobs & Turner Ltd (t/a Trespass)

A mark is not descriptively invalid merely because it alludes indirectly to a characteristic of the goods. Section 3(1)(c) of the Trade Marks Act 1994 applies only where the mark consists exclusively of signs capable of designating relevant characteristics, and the link must be sufficiently direct and specific to be perceived immediately and without further thought. Acquired distinctiveness is assessed globally by reference to factors including the nature, intensity, duration and geographical extent of use, promotion and the proportion of relevant consumers identifying the goods with one undertaking. For infringement, intention is not a required element. A sign may be used in relation to goods where its presentation indicates trade origin, even alongside another well-known mark. Similarity, identical goods and the overall context established likelihood of confusion. Dilution and unfair advantage may arise without intentional conduct, but tarnishing requires objective evidential support.

The claimant owned UK and EU trade marks for FUNTIME covering games, toys and electronic games. It alleged that the defendant’s use of FUN TIME TOYS, presented with stars and alongside its TRESPASS mark, infringed the marks.

The defendant counterclaimed that the marks were invalid for lack of distinctive character or because they were descriptive. The court also considered acquired distinctiveness, infringement under section 10(2) and section 10(3) of the Trade Marks Act 1994, and corresponding provisions of the EU trade mark Regulation.

1. Validity. The marks were not devoid of distinctive character or exclusively descriptive under section 3(1)(c) of the Trade Marks Act 1994. The relevant consumer was principally an adult purchasing toys for children. The question was whether that consumer would immediately and without further thought perceive FUNTIME as describing the goods or a characteristic of them. The evidence showed trade-origin use, including the ® symbol and references to the FUNTIME range. The mark made an indirect allusion to enjoyment but did not consist exclusively of descriptive matter.
2. The UK mark had also acquired distinctiveness through use. Although the evidence did not cover every factor identified in Société des Produits Nestlé SA v Cadbury UK [2017] EWCA Civ 358, the duration and scale of UK use were sufficient. The counterclaim was dismissed.
3. Section 10(2). The defendant’s sign was used as a trade mark because it was presented as a sub-brand or co-brand indicating the supplier of the goods. The court applied the established infringement conditions and considered the whole context. The sign was visually, aurally and conceptually very similar to FUNTIME, the goods were identical, and the presence of TRESPASS did not prevent a likelihood of confusion. Consumers could believe that FUNTIME was owned by, or economically connected with, TRESPASS.
4. Evidence of the defendant’s intention was unnecessary. The absence of evidence of actual confusion was not decisive because there had been limited opportunity for real confusion. Infringement of the UK and EU marks under section 10(2) and Article 9(2)(b) was established.
5. Section 10(3). The UK mark had a reputation. The use created a link, caused dilution, took unfair advantage of the mark’s distinctive character or repute, and was without due cause. These conclusions did not require intentional conduct. The allegation of tarnishment failed because the evidence did not objectively establish detriment to the mark’s repute.