Automobile Club De L’Ouest (Aco) v Omologato Ltd & Anor

Trade mark infringement under the Trade Marks Act turns on the statutory conditions for identity or similarity, the relevant goods, confusion, reputation, link, unfair advantage and due cause. Context is confined to the circumstances of the challenged use, and actual confusion is not required. A word element may retain the distinctive character of a composite mark where the accompanying device emphasises rather than changes it. Descriptive-use protection requires honest practices and fair dealing. Sponsorship assertions, delay and ambush marketing do not establish due cause or honesty without proof. A director who knowingly procures or assists a company’s infringement pursuant to a common design may be jointly liable, notwithstanding limited liability. A later registration may be invalidated where the earlier-mark conditions are met, subject to the statutory five-year acquiescence period.

Automobile Club de L’Ouest, operator of the 24 Hours of Le Mans race, sued Omologato Ltd and its director, Shami Kalra, over uses of LE MANS, LM and LMR in relation to watches. The claims concerned infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act, a proposed descriptive-use defence, Mr Kalra’s personal liability, and invalidity of his LMR registration. Passing off was no longer pursued. The defendants’ late adjournment application was refused and the liability trial proceeded in their absence. The central issues were reputation, similarity, likelihood of confusion, unfair advantage, due cause, honest practices, joint tortfeasance and acquiescence.

1. Disposition. The claimant’s trade mark claims mostly succeeded. LM infringed the claimant’s LM mark under section 10(1). LE MANS infringed the LE MANS marks under section 10(2), and LMR infringed the LM mark. The uses of LM and LMR were not sufficiently similar to the other LE MANS marks for section 10(2) purposes.
2. Statutory tests and reputation. The judge applied the six-condition framework in Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403 at [67] and Shorts International v Google [2026] EWCA Civ 668 at [21]. The absence of actual confusion did not prevent a finding of likely confusion, following Match Group, LLC & Ors v Muzmatch Ltd & Anor [2023] EWCA Civ 454. The 709 mark had reputation and acquired distinctiveness for motor-racing entertainment. The reputation requirement was not onerous, and physical presence in the United Kingdom was unnecessary. The word element LE MANS retained the distinctive character of the composite mark because the track device emphasised it, applying Cactus v OHIM Case T-24/13.
3. Section 10(3) and honest practices. The LE MANS uses created a link with the 709 mark and took unfair advantage of its prestige. The evidence showed deliberate free riding. Alleged sponsorship permission and delay were neither proved nor capable of establishing due cause. The section 11(2)(c) defence failed because the uses were not in accordance with honest practices. The judge treated the conduct as ambush marketing and unfair competition, applying the factors explained in Maier v Asos [2015] FSR 20 at [148].
4. Personal liability. Mr Kalra was the controlling mind of Omologato and knew the essential facts constituting infringement. Applying Lifestyle Equities v Ahmed [2024] UKSC 17 at [135]-[138], he was jointly liable for Omologato’s infringements. Limited liability did not answer a claim in joint tortfeasance.
5. Invalidity. Mr Kalra’s LMR registration was invalid under section 47(2) because it was similar to the earlier LM mark, covered identical or similar goods, and created a likelihood of confusion. It was ordered to be expunged ab initio. Non-opposition before registration did not prevent cancellation. The section 48 defence failed because five years’ knowing acquiescence had not elapsed. Section 10(6) was unavailable because it had been repealed.

This was a first-instance liability trial. The judgment records that HHJ Hacon had stayed and relisted the trial for mediation and had split liability from quantum. The court rejected the defendants’ late adjournment application and proceeded in their absence.