Fit Kitchen Ltd & Anor v Scratch Meals Ltd

Bad faith in applying for a trade mark requires conduct falling short of the standards of acceptable commercial behaviour, assessed on the applicant’s knowledge and circumstances. A company’s later restoration to the register may raise distinct questions about the validity and ownership of an application made while it was dissolved, but an unpleaded issue will not ordinarily be determined.

For infringement under section 10(2), similarity, similarity of goods or services and a likelihood of confusion may be established by the evidence, including actual instances of confusion. The origin function of a trade mark guarantees control by a single undertaking responsible for quality; it does not guarantee the identity of a particular legal entity.

Reputation under section 10(3) requires sufficient knowledge among the relevant public at the relevant date. The threshold for goodwill in passing off is lower.

Fit Kitchen Limited and Amar Lodhia claimed that Scratch Meals Limited had infringed UK Trade Mark No. 3179170, consisting principally of the words FIT KITCHEN, and had committed passing off by selling ready meals under the sign FIT KITCHEN.

Scratch Meals counterclaimed for revocation under sections 47(1) and 3(6) of the Trade Marks Act 1994, alleging that the application had been made in bad faith. The application was filed after Fit Kitchen Limited had been dissolved but before its restoration to the register.

The issues were validity, infringement under sections 10(2) and 10(3), and passing off.

1. Validity. The counterclaim under section 3(6) of the Trade Marks Act 1994 failed. The evidence established that Mr Lodhia did not know on the application date that Fit Kitchen Limited had been dissolved. The pleaded bad-faith case therefore was not made out. The alternative argument concerning the effect of restoration under sections 1012, 1028(1) and 1034(1) of the Companies Act 2006 was unpleaded and was left for another day.
2. Section 10(2). Scratch Meals conceded similarity between the sign and the mark and between its goods and the registered services. The remaining issue was likelihood of confusion. The visual, aural and conceptual identity of the dominant words FIT KITCHEN, together with evidence of actual confusion, established the necessary likelihood. The mark was infringed.
3. The argument that there could be no infringement during the period of dissolution misunderstood the origin function. A trade mark guarantees that goods or services are supplied under the control of a single undertaking responsible for their quality. It does not assure consumers of the identity of a particular legal entity.
4. Section 10(3). The relevant date for assessing reputation was when the defendant first used the accused sign, namely December 2016. The evidence did not show a reputation in the United Kingdom catering-services market by that date. Infringement under section 10(3) therefore failed. Had reputation been established, the use would have taken unfair advantage of it.
5. Passing off. Goodwill, misrepresentation and damage were established. The threshold for goodwill was lower than the threshold for reputation under EU trade mark law. The passing-off claim succeeded.
6. The claim succeeded under section 10(2) and in passing off, but failed under section 10(3). The bad-faith counterclaim failed.

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