Alice Limited v Photogram Limited & Ors

Genuine use of a trade mark is not determined by sales volume alone. Even relatively small-scale use may suffice where it represents real commercial exploitation intended to maintain or create market share.

For partial revocation, the court must identify a fair specification from the perspective of the average consumer. It need not adopt the narrowest wording or merely apply a blue-pencil reduction. Goods within the same group or category, and not substantially different from the goods used, may remain protected.

For infringement, a sign containing the mark with an additional descriptive word may be highly similar without being identical. That additional word may have no material effect on the likelihood of confusion.

Alice Limited owned the registered word mark ALICE for goods and services relating to audio and audiovisual equipment and associated repair and maintenance services. Photogram Limited operated a business offering a camera under the signs ALICE and ALICE CAMERA. The individual defendants were directors and accepted joint tortfeasor liability.

The defendants counterclaimed for revocation of the mark for non-use under sections 46(1)(a) and 46(1)(b) of the Trade Marks Act 1994. The central issues were whether the mark had been put to genuine use across the registered specifications, whether any fair specification was required, and whether the defendants' signs infringed under sections 10(1) and 10(2).

1. Revocation. The counterclaim for revocation was dismissed. The claimant proved actual and genuine use of ALICE throughout the relevant five-year period. The use involved sales and offers for sale of branded audio and audiovisual equipment, sales of associated third-party goods, and repair, maintenance, refurbishment and installation services. The evidence showed real commercial exploitation directed to maintaining or creating market share, rather than token use. The relatively modest turnover did not prevent the use from being genuine.
2. Specification. The evidence supported genuine use across the Class 9 and Class 37 specifications. The average consumer was a professional and technically competent buyer of audio and audiovisual equipment, including sound engineers, producers, technicians, broadcasters, theatre professionals and content creators. The claimant's mixing desks, broadcast consoles, timecode distribution amplifier and microphone amplifier products fell within the relevant general terms. Even if amendment had been required, a narrow list confined to particular audio products would have been unjustified. The fair specification would have involved only a limited amendment to the phrase relating to apparatus used in recording, transmission or reproduction.
3. Infringement. ALICE and ALICE CAMERA were not identical because the claimant conceded that the addition of CAMERA prevented a finding under section 10(1) in respect of that sign. Nevertheless, ALICE CAMERA had the highest degree of similarity to ALICE. ALICE was the dominant and distinctive element, while CAMERA was descriptive. The defendants' cameras were identical goods to apparatus for recording, transmission or reproduction of images. The admitted likelihood of confusion in relation to ALICE applied equally to ALICE CAMERA, so infringement under section 10(2)(b) was established.
4. The First Defendant infringed under sections 10(1) and 10(2)(a) by use of ALICE, and under section 10(2)(b) by use of ALICE CAMERA, from March 2020. The individual defendants were jointly and severally liable as joint tortfeasors.