Equisafety Limited v Battle, Hayward and Bower, Limited & Anor.

A composite sign containing a registered word mark is not identical to that mark where the additional elements form part of the sign perceived by the average consumer. Infringement under section 10(2) requires use of a similar sign for identical or similar goods and a likelihood of confusion assessed globally, through the eyes of the relevant average consumer. Section 10(3) requires reputation, similarity, a link, one of the recognised forms of injury, and absence of due cause. A descriptive-use defence fails where the sign is distinctive and used with trade mark significance. Bad faith is assessed at filing by an overall evaluation of the applicant’s subjective intention and objective circumstances. Joint tortfeasorship requires participation furthering the tort in pursuance of a common design.

Equisafety owned a UK registration for the word mark “Mercury” covering, among other goods, equestrian products and clothing. Battle marketed equestrian products using the labels “HyVIZ Silva Mercury Reflective” and “Silva Mercury”. Equisafety claimed trade mark infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994, passing off, and joint liability against Battle’s managing director, Richard Dewey.

Battle counterclaimed that the registration was invalid for want of distinctiveness, descriptiveness, customary use and bad faith. The central issues were the validity of the registration, whether Battle’s composite signs infringed, whether the statutory defence applied, whether the use constituted passing off, and whether Mr Dewey was jointly liable.

1. Validity. The Mercury registration was valid. The evidence did not establish that the average consumer would regard “mercury” as descriptive of reflective high-visibility clothing or the wider registered goods. Nor had the word become customary in the relevant language or trade. The application was not made in bad faith. Filing after discovering Battle’s use did not itself establish bad faith, and an applicant may seek protection extending to further goods within a genuine commercial category.
2. Section 10(1). Battle’s signs were not identical to the Mercury mark. The relevant signs were “HyVIZ Silva Mercury Reflective” or “Silva Mercury”, viewed as wholes.
3. Section 10(2). The six statutory conditions were identified. Battle’s signs were moderately visually and aurally similar to Mercury, and its products were identical or, in the case of the phone holder, similar to registered goods. Through the eyes of the end-user average consumer, there was a likelihood of confusion, including an assumption of economic association, licensing or co-branding. The descriptive elements of the composite signs did not remove Mercury’s trade mark significance.
4. Section 10(3). The Mercury mark had acquired distinctive character and a reputation. Battle’s use created the necessary link. It caused detriment to distinctive character and took unfair advantage of Equisafety’s investment. Injury to repute was not proved. The use was without due cause, and the section 11(2)(b) defence failed because Mercury was distinctive, non-descriptive and not used in accordance with honest practices.
5. Passing off and liability. Equisafety had goodwill, Battle’s use involved a misrepresentation of connection, and damage followed. Mr Dewey was not jointly liable: his office and shareholding did not prove that he furthered the torts pursuant to a common design.
6. The claim succeeded against Battle for passing off and for infringement under sections 10(2) and 10(3), insofar as the relevant acts occurred after registration. The claim against Mr Dewey was dismissed.