Logos Sufficient To Distinguish Descriptive Word Marks

• Published date: 18 July 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Dehns
• Author: Mr Paul Harris

Summary

The increasing use of apps to sell goods and services, frequently means that what the public use to identify and/or recall a specific supplier, is their logo. This is all the more so, if the purveyor of the goods/services has chosen descriptive words to tell the public 'it does what is says on the tin' (with apologies to the owners of the RONSEAL trade mark).

There has already been a salutary warning about the use of descriptive terms ('Free Prints'), used in relation to an app comprising a logo and the words 'Free Prints' in a case in 2020 (Planetart LLC and anor v Photobox Limited and anor [2020] EWHC 713 (Ch)). In that case, Photobox were found to infringe Planetart's device trade marks, but the action failed in relation to passing off, in large measure, because of the use of 'Photobox', which distinguished the device marks when combined with the words 'Free Prints'.

In the case of Wineapp Ltd v Johnson [2022] EWHC 620 (Ch), the use of different logos with the words 'Winesapp' and 'Wineapp' fell to be considered. Would the logos be sufficient to do so?

Case background

In September 2019, Mr Johnson sought to register his device mark in relation to sommelier services. This was opposed on the ground of passing off by Wineapp Ltd, which considered it had built up considerable goodwill and that Mr Johnson's mark constituted a...