Planetart LLC v Photobox Ltd & Anor (Rev 2)

Trade mark infringement and passing off claims involving descriptive branding require close attention to the marks or signs as a whole and to their actual context of use.

Descriptive wording does not automatically prevent infringement or passing off, but it generally reduces distinctiveness, increases the level of confusion that may be tolerated and gives competitors latitude to describe their goods or services. A defendant’s own prominent branding may make descriptive wording appear descriptive rather than origin-denoting.

For trade mark infringement, actual confusion is unnecessary and the court applies a normative global assessment. For passing off, evidence of actual confusion is generally more significant. A composite icon using descriptive words in a brand position, with similar visual features and without the defendant’s own branding, may infringe even where other uses of the same words, accompanied by clear branding, do not.

The claim concerned alleged trade mark infringement, passing off and invalidity of a registered trade mark arising from competing mobile applications for ordering photographic prints.

The claimants relied on the registered FreePrints Icon and goodwill in the name and branding of their FreePrints applications. The defendants used Photobox Free Prints branding, including an app icon with similar turquoise and white colouring and a stylised image.

An interim injunction had been refused in [2019] EWHC 1688, and permission for survey evidence had been refused in [2019] EWHC 2436. At trial the issues were whether the defendants’ various signs infringed under sections 10(2) or 10(3) of the Trade Marks Act 1994, whether there was passing off, and whether the defendants’ PHOTOBOX FREE PRINTS registration was invalid for bad faith or earlier passing-off rights.

1. The claim succeeded in part. Use of the Photobox Free Prints Icon infringed the claimants’ registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994. The other alleged infringements, the passing off claim and the challenge to the defendants’ registration were dismissed.

2. Under section 10(2), the relevant comparison required a global assessment from the perspective of the average consumer. The marks had to be considered as wholes, including verbal and visual elements and the permitted context of use. The descriptive character of “Free Prints” reduced the significance of the verbal similarity, but did not eliminate the possibility of confusion.

3. The Photobox Free Prints Icon contained significant aural and visual similarities to the registered FreePrints Icon. The words appeared beneath the logo in a position where users of photographic-printing applications would expect a brand. The similar turquoise-and-white colour scheme and broadly comparable line-drawing presentation reinforced the similarity. The prominent absence of PHOTOBOX from the icon was material. Taken together with the identity of the goods and services and the reputation of the registered mark, the similarities created a likelihood of confusion.

4. The app-store name and other signs prominently displaying PHOTOBOX were different. In those contexts PHOTOBOX was the dominant origin-denoting element and “Free Prints” was likely to be understood descriptively. Those signs therefore did not infringe under section 10(2).

5. The same distinction applied under section 10(3). The icon created a link, caused a sufficiently serious impairment of distinctiveness and took unfair advantage of the registered mark. The defendants had not established due cause for using the particular combination of features. The other signs did not establish a link, detriment or unfair advantage and were used with due cause.

6. Passing off was not established. The claimants had goodwill in FreePrints as a single word and in the FreePrints Icon as a whole, but not in “Free Prints” as such. The defendants’ prominent PHOTOBOX branding, together with the absence of convincing evidence of actual confusion during substantial side-by-side trading, meant that the alleged misrepresentation was not proved.

7. The PHOTOBOX FREE PRINTS registration was not applied for in bad faith. The defendants’ knowledge of the claimants’ business and their intention to secure acceptance by Apple did not establish dishonesty or conduct falling below acceptable commercial standards. The registration combined the defendants’ own prominent brand with descriptive wording.

8. The court indicated that the defendants would need to change the icon as displayed on users’ screens, while the claimants had to tolerate genuinely descriptive use of “FREE PRINTS” and allow competitors broad latitude in describing similar services.

This was a first-instance trial in the High Court. An interim injunction was refused in [2019] EWHC 1688, and permission for proposed survey evidence was refused in [2019] EWHC 2436. The present court determined the substantive claim.