LUEN FAT METAL AND PLASTIC MANUFACTORY CO LTD v FUNKO UK LTD

In a registered trade mark infringement claim, the proprietor must prove genuine use sufficient to define a fair specification where non-use is relied upon as a defence, even without a counterclaim for revocation. The fair specification reflects the categories of goods realistically exemplified by the evidence and the perceptions of the average consumer.

For infringement, the sign must be assessed as actually used and in its full context. A word forming part of a character name will not necessarily be perceived separately from the remainder of that name. Likelihood of confusion requires a global assessment of the sign, mark, goods, average consumer and circumstances of use. For infringement based on reputation, a link alone is insufficient: the required injury must also be established by evidence or a properly founded serious likelihood.

The claimant owned UK and EU registrations for FUNTIME, FUN TIME and FUN-TIME covering Class 28 goods. It alleged that the defendant’s licensed merchandise for the Five Nights at Freddy’s: Sister Location game, including Funtime Freddy and Funtime Foxy products, infringed under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994, and the equivalent EU provision.

The court first determined the scope of proven use and the fair specification. It then considered identity and similarity of signs and goods, trade mark use, likelihood of confusion, reputation, the necessary link, detriment, tarnishment, unfair advantage and due cause.

1. Fair specification. Proof of use principles equivalent to those applicable on revocation apply where proof of use is required in infringement proceedings. The proprietor bears the burden of providing solid and specific evidence. The fair specification must reflect goods realistically exemplified by the evidence and the perceptions of the average consumer. Use was established for “toys, games and playthings for babies and pre-school children”, but not across the whole Class 28 specification.
2. Section 10(1). The relevant signs were the complete names “Funtime Freddy” and “Funtime Foxy”. The average consumer would not dissect them so as to treat Funtime as the separate sign. Applying the identity test, the signs were not identical to the registered marks. The claim under section 10(1) therefore failed.
3. Section 10(2). The names had medium visual and aural similarity to the marks. The defendant’s figures were similar goods, while its plush toys were capable of being identical goods to the fair specification. The use of the names could, for some consumers, perform an origin function rather than being purely descriptive. Nevertheless, a global assessment of the packaging, prominent Funko and FNAF branding, the character-name context, the differences in the goods and the absence of evidence of confusion established no real likelihood of confusion. The section 10(2) claim failed.
4. Section 10(3). The UK mark had a reputation because its distinctive character had been enhanced to a limited extent. However, the evidence did not establish that consumers would make a link between the marks and the names. In any event, a link would not itself establish injury. The evidence concerning the frightening nature of the FNAF games did not show detriment to the marks from merchandise. There was no evidence of tarnishment or unfair advantage. The defendant’s licence from the owner of the FNAF rights would not have constituted due cause for infringement of the claimant’s independent rights.
5. The claim was dismissed in full.