Flowerbx Limited v Flowers Box London Limited

A mark combining ordinary words is not descriptive merely because consumers can give it a natural literal meaning. Under Trade Marks Act 1994, the sign must be assessed as a whole, against the specified goods or services, and the relevant public must be likely to recognise an immediate, sufficiently direct link to a characteristic. Acquired distinctive character depends on the overall evidence of trade-mark use and source identification. For infringement, enhanced distinctive character, close similarity, identical goods or services and actual confusion may establish likelihood of confusion and a link. Internet-search mistakes are not automatically irrelevant. Objective benefit from another mark’s reputation may amount to unfair advantage without subjective intent. Innocent adoption alone does not establish due cause. Tarnishment requires a serious risk of impact on consumers’ economic behaviour.

This was a first-instance liability trial concerning a UK word mark, FLOWERBX, and the Defendant’s use of FLOWERSBOX, FLOWERS BOX and FLOWERS BOX LONDON, including stylised versions. The Defendant denied infringement and counterclaimed for partial invalidity under section 3(1)(c) of the Trade Marks Act 1994, relying on descriptiveness. A non-use challenge was resolved by agreement at trial. The issues were whether the mark had enhanced distinctive character, whether it was invalid for descriptiveness, and whether the signs infringed under sections 10(2)(b) and 10(3). The central questions were whether the mark was descriptive of the challenged goods and services, whether the signs created a likelihood of confusion, and whether their use created a link and unfair advantage or detriment.

1. Disposition. The mark was valid. The partial invalidity counterclaim failed, subject to the parties’ agreed amendment of the specification following resolution of the non-use issue. Infringement under both section 10(2)(b) and section 10(3) was established.
2. Validity. Section 3(1)(c) required the mark to be assessed as a whole, by reference to the specified goods and services and the perception of the relevant public. The court applied the principles stated in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch) and the guidance summarised in Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC). FLOWERBX might be understood as flower box, but the evidence did not show that the relevant public would immediately perceive it as designating a characteristic of the challenged Class 31 goods or Class 35 services. The mark had nevertheless acquired enhanced distinctive character by early 2019 and at least medium distinctive character by February 2026, applying the approach in Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch).
3. Section 10(2)(b). The court applied the global assessment required by Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454, considering the average consumer, imperfect recollection, overall impressions, visual, aural and conceptual similarity, interdependency and distinctive character. The signs were closely similar to FLOWERBX and were used for identical goods or services. The evidence showed repeated consumer confusion, including confusion arising from internet searches. Such mistakes were not automatically administrative or irrelevant. The addition of LONDON could operate as a sub-brand and did not avoid indirect confusion, applying Sazerac Brands, LLC v Liverpool Gin Distillery Ltd [2021] EWCA Civ 1207. The section 10(2)(b) claim succeeded.
4. Section 10(3). Applying Thatchers v Aldi [2025] EWCA Civ 5, the court found a UK reputation, a link and a change in consumers’ economic behaviour. The Defendant’s use objectively enabled it to benefit from the Claimant’s reputation, even without proof of subjective intention. The court was not satisfied that the evidence established a serious risk of tarnishment, but unfair advantage was sufficient. The Defendant had no due cause: under Lidl Great Britain Limited v Tesco Stores Limited [2024] EWCA Civ 262, innocent adoption alone was insufficient and no fair balance justified the use.
5. Final order. The claim succeeded and the counterclaim was dismissed, subject to the agreed specification. If the parties could not agree the form of order, a further hearing was to be listed.