Planet Art LLC & Anor v Photobox Ltd & Anor

At the interim stage of a passing-off claim, the court must first decide whether there is a serious question to be tried. It should not resolve critical disputed facts or difficult legal issues better left for trial. If that threshold is met, the court applies the balance-of-convenience principles in American Cyanamid v Ethicon [1975] AC 396, considering the likely harm, the adequacy of damages, the parties’ undertakings and the status quo.

Descriptive words may acquire protectable distinctiveness, but the protection is narrower than for an inherently distinctive mark. Minor differences or different presentation may restore the descriptive meaning. Confusion is insufficient without a real likelihood that deception will divert trade or damage goodwill. The application was therefore refused, with undertakings maintained pending an expedited trial.

The claimants, operators of an online photo-printing service using the sign FREEPRINTS, sought an interim injunction restraining the defendants’ use of FREE PRINTS and PHOTOBOX FREE PRINTS for a competing photo-printing application.

The claimants alleged goodwill, misrepresentation and damage. The defendants argued that FREE PRINTS was descriptive, that their use was distinguished by the PHOTOBOX name and presentation, and that their undertakings sufficiently reduced any risk of actionable deception.

The court considered whether the defendants could offer revised undertakings pending trial and whether an interim injunction should be granted in light of the serious-question threshold, the balance of convenience and the relative strength of the passing-off case.

1. Undertakings. The continuation of the defendants’ undertakings had been discussed orally in a context referring principally to the appearance of the application. Applying the guidance in Zipher v Markem [2009] EWCA Civ 44, undertakings are serious commitments which should be expressed clearly, and genuine uncertainty should be resolved in favour of the person said to be bound. The original order was therefore reconsidered, and the revised written undertakings were taken into account.
2. Passing off. The tort requires goodwill or reputation, a misrepresentation causing deception, and damage to goodwill. The elements are interrelated. Passing off does not confer a monopoly over a name or descriptive words. Descriptive words may be protected where they acquire a secondary meaning capable of distinguishing trade origin, but the scope of protection is narrower. The court must consider whether the descriptive element has acquired such meaning, its scope, whether a substantial number of the relevant public would perceive it, and whether the defendant’s conduct is really likely to divert trade and damage goodwill.
3. Interim relief. The court could not safely conclude that there was no serious question to be tried. The evidence left open the possibility that FREEPRINTS had acquired some secondary meaning, and the court declined to resolve critical factual disputes or difficult points of law at the interim stage. However, damages were unlikely to be fully adequate for either party. The balance therefore depended on the lowest risk of injustice, including the likely harm, the relative difficulty of quantifying loss, the undertakings and the status quo.
4. The defendants’ revised undertakings maintained changes to the application’s appearance and restricted aspects of marketing. They materially reduced the likelihood and potential extent of actionable deception. The likely harm from wrongly restraining the defendants was greater than the likely harm to the claimants from refusing an injunction. The claimants’ case also had material weaknesses, including the descriptive nature of FREE PRINTS, limited evidence of secondary meaning and uncertainty whether any confusion would amount to actionable deception rather than mere confusion.
5. The application for an interim injunction was refused. The defendants’ undertakings were to be maintained pending an expedited trial.