The High Court has handed down judgment involving trade mark infringement and passing off in relation to mobile apps for printing services. The claim succeeded for trade mark infringement but failed for passing off over the same sign.

BACKGROUND

PlanetArt and Photobox are companies that both offer online printing services through mobile apps.

In 2014 PlanetArt launched its main app, called “FreePrints” (below left). PlanetArt has a UK registered trade mark for its app icon.

In early 2018, Photobox also created an app called “Photobox Free Prints” (below right). Photobox has a registered trade mark for the word mark “PHOTOBOX FREE PRINTS”.

In 2019, PlanetArt issued proceedings against Photobox, alleging Photobox’s use of the name “Free Prints” and other aspects of the branding for their app amounts to passing off. PlanetArt were unsuccessful in seeking an interim injunction against Photobox based on passing off.

In late 2019, PlanetArt’s claim was amended to include trade mark infringement.

HIGH COURT DECISION

On 25 March 2020, Mr Daniel Alexander QC delivered judgment in the High Court:

(1) The use by the Defendants of the Photobox Free Prints Icon infringes the Claimants’ Registered Trade Mark pursuant to both sections 10 (2) and 10 (3) of the Trade Marks Act 1994 but the other claims for trade mark infringement are dismissed.

(2) The claim for passing off is dismissed.

(3) The claim to declare the Defendants’ trade mark registration for PHOTOBOX FREE PRINTS invalid is dismissed“.

TRADE MARK INFRINGEMENT

App Icon

As part of the assessment under section 10(2), the judge highlighted the “significant similarities in aural and visual elements of the sign” [160]. With regards to conceptual similarities, the judge noted the marks do not really have “conceptual” content, but of significance is whether the words beneath the logo are a brand or merely descriptive. The judge concluded that the former invariably applies for apps of this kind and “the average consumer is likely to expect the term below the logo to have trade mark significance” [161]. Therefore, the judge found infringement under section 10(2).

Infringement was also found under section 10(3), with the judge noting “the very widespread use of this icon on the screens of millions of phones is likely to diminish the ability of the Mark to act as the reliable ‘face’” of PlanetArt [179].

App Store and branding

Infringement was not found under section 10(2) and (3) for other aspects of Photobox’s branding as the judge distinguished the prominent use and positioning of the word “PHOTOBOX” which ultimately “attributes greater origin-denoting significance to those parts of the signs (taken as a whole) to be origin denoting (“PHOTOBOX”) and greater descriptive significance to those parts of the signs which appear to be most naturally descriptive of the goods or services offered (“FREE PRINTS”)”[169].

PASSING OFF

The judge found PlanetArt had some goodwill in the mark “FreePrints” and in the FreePrints Icon as a whole. However, the judge found that “the specific uses complained of do not make a misrepresentation and the evidence is insufficient to prove that such would” [196]. The judge stated “there is sufficient identification by the Defendants of the origin of the goods by the use of its own brand PHOTOBOX” [197]. The judge also noted there was no evidence of actual confusion. Since no misrepresentation was found, the claim for passing off failed and there was no need for the judge to consider damage.

INVALIDITY CLAIM

PlanetArt also made an invalidity claim against Photobox for their word mark on the grounds of bad faith and PlanetArt’s earlier rights of passing off. The latter was disregarded as the judge had already found the claim for passing off failed.

The judge also dismissed the application on the ground of bad faith noting that “the manner in which the elements of the mark are combined sufficiently clearly signal that the goods and services to which it would be applied have their trade origin in PHOTOBOX and are free prints prints or a service for delivering such” [209]. The judge highlighted the distinction between “making a trade mark application which seeks legitimately to protect its own business and which uses one’s own mark as the most prominent element and a mark that is applied for in bad faith” [209].

MOVING FORWARD

The judge offered very practical guidance to both parties in the concluding comments. He suggested that Photobox may wish to amend their branding and ensure the distinction between the respective businesses is completely clear. The judge also reinforced that the ruling does not give PlanetArt free reign to prevent other businesses or apps that offer free prints (or similar services) from using the term “FREE PRINTS” in a genuinely descriptive manner to describe the services they are offering.

The decision is very useful for a review of the law and authorities for trade mark infringement and passing off. The judgment ultimately highlights how trade mark protection, in comparison with passing off, is an efficient tool that provides power to limit a defendant’s activities and exclusivity regardless of the wider context in which it is used.