Urbanbubble Limited & Ors. v Urban Evolution Property Management Limited & Ors.

For trade mark infringement under section 10(2) of the Trade Marks Act 1994, confusion requires more than the sign merely bringing the earlier mark to mind. The evidence must establish a significant risk that the average consumer will believe that the services come from the same or economically linked undertakings. Confusion is assessed at the point of the relevant economic transaction and in all the circumstances of use. Where there is more than one relevant consumer class, each class must be considered separately.

For section 10(3), detriment to distinctive character requires evidence, or a properly founded serious likelihood, of a change in the average consumer’s economic behaviour. Implied consent requires an objective and unequivocal demonstration of renunciation of exclusive rights. Promissory estoppel cannot replace the statutory requirement of consent in trade mark law.

The claimants, companies trading in property management under the name Urbanbubble, alleged that the defendants infringed their registered URBANBUBBLE trade mark by using the sign Urban Evolution and had passed off their services as those of the claimants.

The claim concerned section 10(2) and section 10(3) infringement, passing off, consent, estoppel or acquiescence, and the alleged joint tortious liability of one defendant director. The defendants denied infringement and relied on the claimants’ communications concerning a redesigned logo and continued use of the Urban Evolution name. The central issues were whether the sign created a legally relevant likelihood of confusion or misrepresentation, whether the claimants had consented to its use, and whether the individual defendant was personally involved in any tort.

1. Section 10(2). The use of Urban Evolution did not infringe the URBANBUBBLE mark. Mere association or the possibility of a connection was insufficient. The relevant question was whether there was a significant risk that the average consumer would hold a fully formed belief that the services came from the same or economically linked undertakings. The assessment had to be made at the point of an economic transaction and in the context of all relevant circumstances of use.
2. There were two relevant consumer classes: property developers and investors. They were to be assessed separately, not averaged into a single notional consumer. The evidence from two investors showed, at most, a likely possibility of a connection. It did not establish the required likelihood of confusion. The fact that the defendants replaced the claimants as manager of the same building for the same developer increased the possibility of confusion, but did not satisfy the statutory test.
3. Section 10(3). The mark had a sufficient UK reputation and the defendants’ sign created a link in the mind of the average consumer. However, unfair advantage was not established. Nor was detriment to distinctive character: there was no evidence of a change in the economic behaviour of average consumers, or a serious likelihood of such a change. The section 10(3) claim therefore failed.
4. Passing off. The claimants had goodwill, but the evidence did not establish a misrepresentation. The relevant public had not formed the necessary belief or assumption that the defendants’ services were connected with the claimants. Damage therefore could not arise.
5. Consent. The contemporaneous communications objectively demonstrated that the claimants had renounced any intention to enforce their trade mark rights against use of the Urban Evolution trading name. Consent was qualified only by the requirement to change the old logo, which was fulfilled. The alleged infringer bore the burden of proving consent on the balance of probabilities, and the consent had to extend to the use in issue.
6. Estoppel was rejected. It could not operate as an alternative defence to infringement where the statutory scheme required consent. In any event, the defendants had not relied on the alleged assurance, and no sufficient existing legal relationship for promissory estoppel had been established.
7. The claim against the individual director failed. Directorship alone did not create personal liability. Personal involvement in the alleged tort to an extent sufficient to make the individual a joint tortfeasor had not been shown.
8. The claim for trade mark infringement and passing off was dismissed.