How Trademark Law Is Being Applied To The Evolving World Of Apps

A recent judgment has seen trade mark law applied in the world of apps. Photobox's app icon was found to infringe PlanetArt's registered UK trademark protecting its 'FREEPRINT' app icon: Photobox's branding was too close and held to infringe.

Other aspects of Photobox's branding did not amount to trade mark infringement or passing off. But while confirming that there is no tort of targeting (and seeking to take key features of) a rival's business as such, the judge made clear his view that some of Photobox's other uses were, euphemistically, "antisocial non-distancing", and suggested that the final costs award would reflect this.

The judgment of Daniel Alexander QC (sitting as a deputy judge) in PlanetArt LLC & Anr v Photobox Limited & Anr [2020] EWHC 713 (Ch) provides a thorough review of trade mark law in a very modern context.

The law on trade mark infringement and passing off - a brief refresh and what's new

First, the judge considered the tort of infringement under s.10(2) of the Trade Marks Act 1994 ("TMA"), which is where: the sign complained of is identical or similar to the registered mark; the use complained of is in respect of goods and services identical or similar to those registered for the mark; and the use complained of is UK-based, in the course of trade and without proprietor consent, resulting in a likelihood of confusion to the average consumer (Comic Enterprises v Fox1).

The average consumer is deemed to be reasonably well informed, but seldom able to make direct comparisons; relying on an imperfect picture from memory. The average consumer perceives a mark as a whole (or has a "global appreciation"), assessing the overall impression with an eye on distinctive or dominant components (Specsavers v Asda2).

To these well-established principles, the judge added that the sign complained of must be evaluated in the context in which it is actually used.

Second, the judge considered the tort of infringement under s.10(3) TMA, which is where: the sign complained of is identical or similar to a registered mark; the registered mark has a reputation in the UK; the use complained of is in the course of trade concerning goods or services; the use gives rise to a link between the offending sign and the registered mark to the average consumer; and the use causes at least one of (a) detriment to the distinctive character of the mark, (b) detriment to the repute of the mark, or (c) unfair advantage being taken of the distinctive character or repute of the mark; and is "without due cause" (Interflora v Marks and Spencer3).

The judge said that:

On the assessment of "detriment", the descriptiveness of the registered mark is key. A trader has "less right to complain" of dilution to its brand if it has "chosen a mark which is of limited distinctiveness in the first place". Detriment to distinctive character might occur where the claimant felt "obliged to make their mark more different from that of a...