Advance Magazine Publishers Inc. & Anor v Cornucopia Entertainment Limited & Anor

Trade mark use is not merely informational where advertisements, prices and contact details would lead the average consumer to believe that the trader could provide access to the proprietor’s events. Such use may affect the origin function and constitute misleading use, even if no sale is proved. Ticket-facilitation or concierge services may be identical or similar to ticketing and event services. A likelihood of confusion does not require proof of actual confusion.

Use of reputed marks in this way may also create a link, cause dilution, take unfair advantage of reputation and amount to passing off. A director or controller is jointly liable only where he knew the essential facts making the acts wrongful. Knowledge of a risk of complaint is insufficient for infringement under sections 10(1) and (2), but knowledge of reputation and intended unfair advantage may suffice under section 10(3).

The claim concerned the use of the names Vanity Fair and GQ by a company providing event and concierge services, and by its managing director. The claimants alleged infringement of five registered marks under sections 10(1), (2) and (3) of the Trade Marks Act 1994, together with passing off.

The defendants initially asserted that access to the events had been lawfully acquired through secondary channels. They later amended their case to deny selling or offering tickets, maintaining that the references were descriptive and informational. The central issues were whether the defendants’ website, social media posts and email responses were transactional or merely informational; whether the marks had enhanced distinctive character and reputation; whether infringement and passing off were established; and whether the managing director was jointly liable.

1. Liability and disposition. The First Defendant infringed the Vanity Fair and GQ marks under sections 10(1), (2) and (3), save that the GQ Men of the Year mark was not infringed under section 10(1). The Defendants also committed passing off. Mr Vohra was jointly liable only for the section 10(3) infringements.
2. Use and origin function. The references to the Events were transactional advertisements, not editorial or purely informational uses. Their wording, ticket prices, invitations to contact the Defendants and claims to provide exclusive access would lead the average consumer to believe that Cornucopia could provide tickets or access. Advertising alone can infringe; proof of completed sales is unnecessary. The use was misleading because the Defendants had no allocation of tickets and the Events did not offer tickets for sale.
3. Goods and services; confusion. Concierge or ticket-facilitation services can amount to ticketing services. The services were identical or highly similar to relevant entertainment, event and ticketing services. Applying the global assessment, the identical marks, enhanced distinctiveness, reputation, similarity of services and misleading context created a likelihood of direct or indirect confusion. Actual confusion was not a prerequisite.
4. Reputation and section 10(3). The marks had enhanced distinctive character and reputation for publications, award ceremonies and ticketing or event-booking services, but not across all claimed entertainment or catering services. The use created a link with the marks, diluted their distinctive character and took unfair advantage of their glamour and exclusivity. Tarnishment was also a possible consequence. The use was without due cause and contrary to honest practices.
5. Passing off. The claimants had goodwill. The advertisements and communications made misrepresentations likely to deceive the public into believing that Cornucopia’s services were connected with or associated with the claimants. The conduct was really likely to cause damage through diverted trade and harm to the reputation for exclusivity.
6. Joint liability. Applying Lifestyle Equities CV v Ahmed [2024] UKSC 17, a person who has not committed the tort must know the essential facts making the conduct wrongful. Mr Vohra directed, procured and authorised the acts and knew of the marks and their reputation. He did not know, or ought not to have appreciated, the likelihood of confusion required for sections 10(1) and (2), or for passing off. He did know of the reputation and the intended unfair advantage sufficient for section 10(3).
7. Procedure. The supplemental evidence was admitted only where it was already disclosed or its importance constituted an exceptional reason under CPR 63.23 and Practice Direction 63.

First instance decision. The judgment records no earlier determination in the same proceedings.