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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Data Marketing & Secretarial Ltd & Anor v S & S Enterprises Ltd [2014] EWHC 1499 (IPEC) (16 May 2014) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2014/1499.html Cite as: [2014] EWHC 1499 (IPEC)

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IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT

		Royal Courts of Justice, Rolls Building Fetter Lane, London, EC4A 1NL
		16/05/2014

Judge Hacon :

Introduction

1. The First Claimant ("Data Marketing") is the proprietor of UK registered trade mark no. 2637779 ("the Trade Mark"). It is a word mark, JUMPSTAR, and is registered in Class 9 for "Batteries; batteries for vehicles; battery packs; battery starters; battery adaptors; battery chargers; battery cables; parts and fittings for the aforesaid goods." The Second Claimant ("Winning Deals") is the exclusive licensee of the Trade Mark. The claimants have the same managing director, John Sless, who also owns a substantial proportion of the shares of each of the companies.
2. Winning Deals markets a product used to charge a vehicle's battery by connecting the product to a 12 volt power outlet of that vehicle. The device is sold under the JUMPSTAR trade mark,
3. The First Defendant ("SSEL") is an importer and wholesaler of a variety of goods. In May 2011 a Hong Kong company offered to supply SSEL with a battery charger having the trade name JUMPSTAR. SSEL imported these chargers into the UK and from about September 2012 they were marketed in this country under the JUMPSTAR name by SSEL acting as a wholesaler and also by the Second Defendant ("Selective Marketplace"), a customer of SSEL. Selective Marketplace is the beneficiary of an indemnity offered by SSEL and has not taken any active part in the proceedings.
4. Complaints of infringement of the Trade Mark were raised by the claimants, in particular in a fax dated 4 February 2013 from Data Marketing to Selective Marketplace. On 15 March 2013 the Claim Form in this action was issued and the Particulars of Claim were served on 21 March 2013. The Defence and Counterclaim was served on 28 April 2013. The counterclaim was for an order that the Trade Mark be declared invalid and for alleged groundless threats of infringement proceedings, relying in particular on the fax of 4 February 2013.
5. On 12 July 2013 Anthony Burrows, a trade mark agent acting for the defendants, wrote to the claimants' solicitors stating that while no liability was admitted in relation to the allegations raised the defendants undertook, broadly, that they would not after 15 July 2013 use the JUMPSTAR trade mark or any similar mark in relation to the relevant Class 9 goods or any similar goods. No damages or costs were offered. The claimants decided to pursue the claim for damages and costs. There followed a succession of amendments to the pleadings.
6. The defendants admit they have infringed the Trade Mark subject to the defence that the Trade Mark is invalidly registered. The grounds of invalidity relied on are:

(1) Art 3(1)(c) of Directive 2008/95/EC ("the Trade Mark Directive"): the Trade Mark consists exclusively of signs or indications which may serve, in trade, to designate a characteristic of the goods in respect of which it is registered;

(2) Art 3(1)(b): the Trade Mark is devoid of distinctive character;

(3) Art 3(2)(d): the application for the Trade Mark was made in bad faith.

In addition the defendants rely on the following defence:

(4) Art 6(1)(b): the JUMPSTAR sign used by them was an indication concerning the kind, intended purpose or other characteristic of batteries, batteries for vehicles, battery packs and/or battery starters in relation to which the sign had been used by the defendants, and that such use had been in accordance with honest practices in industrial or commercial matters.

The three issues raised on validity and the defence under Art 6(1)(b) were thus the issues to be resolved at trial, along with a fifth:

(5) Whether the claimants had made a threat actionable under s.21 Trade Marks Act 1994 ("the Act"). The claimants admitted the threat but denied that the defendants were persons aggrieved within the meaning of that section.

Art 3(1)(c) – whether the Trade Mark designates a characteristic of the goods

7. The defendants' case under Art 3(1)(c) is as follows (para 32(2)(a) of the Amended Defence and Counterclaim):

"The sign JUMPSTAR, being highly similar both visually and aurally to the word "jump-start", may serve to indicate to the consumer that the product in relation to which it is used is capable of and intended to supply sufficient energy to a vehicle with a flat battery to enable it to be started."

8. This argument was developed to be that the average consumer would be likely to mistake 'jumpstar' for 'jump-start' (or 'jump start' or 'jumpstart'); the latter is a word well understood to describe what the relevant product did, namely charge the battery of a vehicle.
9. At times counsel for the defendants put her case on the basis that JUMPSTAR would be taken to 'allude' to the characteristic of jump starting. I don't think that an argument based on 'allusion' takes the defendants anywhere further. Alleging a mark is descriptive because it alludes to a characteristic of the relevant goods or services potentially leads to a debate about the meaning of 'allusion' and whether or not it is possible for a trade mark to allude to a characteristic of the relevant goods or services without being descriptive; on one view the power of a trade mark to allude to attractive qualities can make for a commercially valuable (and valid) trade mark. It depends what is meant by 'allusion'. In the present case the allusion referred to by the defendants, whatever was precisely meant by that, could not in any event occur unless the average consumer has made the mistake relied on, in which case there is no need to rely on allusion. The mark JUMPSTAR, accurately perceived, alludes only to the twin ideas of jump and star.

The law in relation to the present case

10. Article 3 of the Trade Mark Directive provides in paragraph 1 that the following shall not be registered:

"(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of the rendering of the service, or other characteristics of the goods or service."

11. The equivalent provision in Council Regulation (EC) 207/2009 ("the Trade Mark Regulation"), i.e. Art 7(1)(c), was considered by the Court of Appeal in Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2013] EWCA Civ 1465; [2014] FSR 20. Sir John Mummery, with whom Patten and Pitchford LJJ agreed, summarised the law relying principally on what Arnold J had said at first instance. In Starbucks the central challenges to the validity of the trade mark under Art 7(1)(b) and Art 7(1)(c) (Art 3(1)(b) and (c) in the Trade Mark Directive) were essentially the same, run under the two alternative heads. Sir John Mummery said this:

"[38] As for art.7(1)(b), Arnold J. cited the relevant principles as summarised in Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v BORCO-Marken-Import Matthiesen GmbH & Co. KG (C-265/09) [2010] E.C.R. I-8265; [2011] E.T.M.R. 4. As for art.7(1)(c) Arnold J. cited the principles to be applied as summarised in Agencja Wydawnicza Technopol sp. z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P) [2011] E.C.R. I-1541; [2011] ETMR 34

[39] I will not repeat the lengthy passages. The position in short is that a sign which designates a characteristic of the relevant service is devoid of any distinctive character. Such signs are often referred to as descriptive, as they are easily recognised by the relevant class of persons as describing the service in respect of which registration is sought or made.

[40] As the judge stated at [92] of his judgment

"[A] sign is caught by the exclusion from registration in Article 7(1) (c) if at least one of its possible meanings designates a characteristic of the goods or services concerned."

[41] The basic aim of such exclusions from registration is obvious: to prevent an undue monopoly in the course of trade of a designation that may be used descriptively of a service or of any of its characteristics. It is in the general public interest that undertakings should be able to describe freely any characteristic of their own service, irrespective of how commercially significant that characteristic may be."

12. Starbucks and the authorities to which Sir John Mummery referred establish the overall purpose of Art 3(1)(c) but do not have exact application to the present case. Starbucks is typical of this line of authority: there was no dispute about what the sign in question, the word NOW, indicated to the average consumer according to its various meanings in English. The point at issue was whether any of those meanings may serve to designate, in trade, a characteristic of the relevant services, in that case a television service. By contrast, in the present case there is no doubt that 'jump-start' designates the activity of charging the battery of a vehicle. The central dispute is about whether the average consumer would be likely to mistake 'jumpstar' for 'jumpstart'. Does the 't' at the end of the word make all the difference or does it not? The claimants made the point that the battery charging activity is generally spelt 'jump-start' with the hyphen, or possibly 'jump start'. But in my view this is not a distinction that would be seen as significant by the average consumer. I therefore accept that the defendants are entitled to put their case by relying on a comparison between 'jumpstar' and 'jumpstart'.
13. While there is no single clear meaning conveyed by 'jumpstar', strictly read, each alternative possibility has something to do with an association between a star, whether of the astronomical or celebrity variety, and jump in its various meanings. The defendants have no issue with that. Their argument rests fully on the likelihood of confusion on the part of the average consumer when the mark is used in association with battery chargers, such that the mark is in fact perceived as 'jumpstart'.
14. Art 3 of the Trade Mark Directive contains the absolute grounds for refusal or invalidity of a trade mark. In effect the defendants' counsel presented her case in relation to Art 3(1)(c) as if it were to be treated the same as an argument under Art 4(1)(b) for relative grounds of invalidity – or alternatively the way in which a case for infringement under Art 5(1)(b) would be advanced. Was there a likelihood of confusion on the part of the average consumer between 'jumpstar' and 'jumpstart'?
15. There are parallels. Assessment under Art 3(1)(c) is to be done through the eyes of the average consumer, who is reasonably well informed, reasonably observant and circumspect and it must be done by reference to the goods or services concerned, see Case T-544/11 Spectrum Brands v OHIM [2013] ECR 0000 at [19] (General Court).
16. Conceptually it is possible to consider a sliding scale: at one end is a sign, whether figurative or a word, which does not designate a characteristic of relevant goods or services and at the other end a sign which unambiguously does. At and beyond some point along this scale a sign will be taken by the average consumer to designate the relevant characteristic. I can see no necessary reason why the tipping point is to be determined in the same way that likelihood of confusion is assessed in the context of Art 4(1)(b) or Art 5(1)(b) of the Directive. The defendants' case essentially is that the average consumer would not notice the difference between 'jumpstar' and 'jumpstart'. This is reminiscent of the test for whether a trade mark and a sign are identical, see Case C-291/00 S.A. Société LTJ Diffusion v Sadas Vertbaudet SA [2003] ECR I-2799; [2003] FSR 34, in particular at [53] where the European Court of Justice said this:

"Since the perception of identity between the sign and the trade mark is not the result of direct comparison of all the characteristics of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by the average consumer."

17. A closer guide to the correct test is found in the authorities which deal directly with Art 3(1)(c) or its equivalent albeit, as I have said, not exactly in this context. The most authoritative is Case C-51/10P Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ETMR 34:

"[50] The fact that the legislature chose to use the word "characteristic" highlights the fact that the signs referred to in art.7(1)(c) of Regulation 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of art.7(1)(c) of Regulation 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in art.3 of Directive 89/104 , Windsurfing Chiemsee [1999] ETMR 585 at [31], and Koninklijke KPN Nederland [2004] ETMR 57 at [56])."

18. In Case T-207/06 Europig SA v OHIM [2007] ECR II-1961 the General Court said:

"[26] The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought (see Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-2383, paragraph 24, and the case-law cited there).

[27] It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB, paragraph 25, and the case-law cited there)."

19. In Starbucks at first instance Arnold J took the view that there was no real difference between Technopol and Europig regarding the points of principle as to how readily the average consumer must perceive the descriptive nature of a mark in order for it to be caught by the prohibition in Art 3(1)(c) (or equivalent), see Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2012] EWHC 3074 (Ch); [2013] FSR 29, at [95].
20. So the test in relation to Art 3(1)(c) is that there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the average consumer immediately to perceive, without further thought, a description of the goods and services in question or one of the characteristics of those goods or services.
21. It may be that there is little practical distinction, at least in the present case, between that and the test based on a likelihood of confusion. The average consumer is reasonably well informed, observant and circumspect. According to either test he or she must be deemed to give the trade mark JUMPSTAR the attention appropriate to a mark on consumer goods, specifically a battery charger, see Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819 at [26]. One possibility is that after applying that degree of attention he will immediately perceive (visually or aurally), without further thought, the sign 'jumpstart'. In that case he will be confused. On the other hand, if there is no such immediate perception, this implies either doubt in his mind and the probability of closer attention, or alternatively an immediate perception of the combination word 'jumpstar'. If this is right, in either case there will be no confusion.
22. In any event I think the test to be applied here involves hypothesising the average consumer considering a battery charger bearing the sign JUMPSTAR and giving it the degree of attention appropriate to such goods, and then assessing whether there will be an immediate misperception of the mark, taking it to be JUMPSTART, without further thought. This turns on the evidence.

The evidence

23. The defendants relied on two witnesses. The first was Mr Burrows, the defendants' trade mark agent who had conduct of the proceedings on the defendants' behalf. He said that 'quite occasionally' in his office 'jump start' had been used in correspondence about the case instead of 'JUMPSTAR'. In cross-examination he said that although the people doing the word processing had made this mistake quite a lot, only once or twice had this gone unnoticed so that letters went out bearing the mistake. No evidence was given as to whether the secretarial staff had made an aural or visual mistake or the circumstances which had led to the mistakes – nothing about what exactly had happened and why. Secondly the defendants relied on the evidence of Mr Samama who is general manager of SSEL. He said that some customers appear to see no distinction between the brand JUMPSTAR and the words 'jump start' or 'jumpstart'. No details were given as to how many customers he was talking about, what they had said or done and to whom this had been explained. In cross-examination he referred to catalogues in this context, but they were not adduced in evidence. Mr Samama also said that when his company was offered the JUMPSTAR product he was under the impression it was called JUMPSTART. He admitted though that at this time he was not greatly interested in the product, his attention being focussed on a tray being offered by the same company. On 4 August 2011 SSEL placed an order with Asia Products Manufacturing Co ("Asia Products") for 1000 JUMPSTAR products, describing them in the order as "Jump Start Battery". There was a suggestion by Mr Samama in cross-examination that this was a mistake caused by the similarity between 'Jumpstar' and 'Jumpstart'. However he also said that before this he had asked Mr Burrows to carry out a trade mark search in relation to JUMPSTAR. I think it is likely that by 4 August 2011 he had a clear idea of what the trade mark was and that it had no 'T' at the end. It may not have been Mr Samama who filled out the order form on 4 August 2011 but if it was someone else there was no evidence from that individual to explain why the words 'Jump Start Battery' were used.
24. Counsel for the defendants also made much of the possibility that the word 'jumpstart' would sound like 'jumpstar' if spoken by those with an accent that tends not to pronounce the 't' at the end of words and that this would lead to aural confusion. But no evidence was given indicating that such oral use of the trade mark had ever confused anybody and if so, the circumstances in which this had happened. Moreover aural similarity alone is liable to be insufficient where there are significant visual and conceptual differences, see Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767.
25. In my view none of this evidence individually or collectively comes close to establishing that an average consumer, when encountering the mark JUMPSTAR in association with a battery charger, would immediately perceive it to be JUMPSTART without further thought. I would reach the same conclusion if the test were the standard test for confusion as applied in the usual way in the context of the relative ground for invalidity in Art 4(1)(b). I find that the allegation under Art 3(1)(c) is not made out.
26. The claimants argued that even if the mistake in perception were made so that JUMPSTAR conveyed to the average consumer the idea of jump-starting, this was not in fact what their battery charger actually did, so jump-starting was not one of its characteristics. Jump-starting, properly so described, is a relatively rapid process of using the charge from one vehicle's battery to charge the battery of another vehicle via jump leads. The claimants' product takes significantly longer to charge a dead battery and there was evidence that the technically correct term for this process is 'trickle charging'. That may be right from a pedantic viewpoint. But I do not accept that this is a distinction that would be in the mind of the average consumer. The giveaway is the advertisements for the product, including the claimants' own advertisement which in large print says "Jump Start Your Car" and below states "This exciting new product is the simple way of jump starting your car when the battery is drained." I have no doubt that those who drafted the advertisement accurately took the view that the public would perceive the function of the JUMPSTAR product to be a jump-starter for a vehicle's battery. However in the light of my finding in the preceding paragraph this does not make any difference.

Art 3(1)(b) – whether the Trade Mark is devoid of distinctive character

27. The defendants' case under Art 3(1)(b) was that at the date of application for the Trade Mark:

"…it was not capable of distinguishing the goods of one undertaking from those of other undertakings, in that the said name or mark JUMPSTAR had already (by then) been used by multiple traders or in relation to goods which were not those of the Claimants or either of them." (Amended Defence and Counterclaim, para. 32)

28. It was common ground between the parties that it is possible for a trade mark which is otherwise inherently distinctive in relation to the relevant goods or services to have been robbed of its power to be distinctive of origin by the time of application to register the mark because of use of the mark by parties other than the applicant, and that a mark which cannot as a consequence serve as a badge of origin is barred from registration pursuant to Art 3(1)(b). I will therefore go forward on that basis.
29. The defendants must show that the JUMPSTAR mark was used by third parties in the United Kingdom before the date of application, 11 October 2012, and that the mark came to the attention of consumers in such a way that by that date it could not serve as a badge of origin to the average consumer. I take the average consumer to be a consumer interested or potentially interested in buying or using a battery charger. In this regard the defendants pleaded six uses of the JUMPSTAR brand by parties other than the claimant in paragraph 11 of the Amended Defence and Counterclaim.
30. First was the offer on 6 November 2010 by Media Brands International Limited ("Media Brands"), a Hong Kong company, to supply the JUMPSTAR battery charger. The only evidence is an email of that date showing that the offer was made to SSEL. The offer was not taken up. This does not suggest that the average consumer would have had any sight of the mark.
31. The second was a similar offer by another Hong Kong company, Asia Products, in May 2011. Again, the only evidence is that this was made to and will have been seen by SSEL.
32. Third was the purchase order made on 30 October 2011 by SSEL to Asia Products of 1000 products described on SSEL's order form as "Jump Start Battery". No evidence was given as to when this order was fulfilled and when SSEL sold any products supplied under the JUMPSTAR name. It is clear the defendants sold some by 11 October 2012 because Mr Sless, managing director of both claimants, said that he was aware of such sales. But that is the extent of the evidence. The claimants were also selling the product under the JUMPSTAR name and had been importing the products into the UK since June 2011.
33. The fourth was a YouTube promotion said to have taken place 11 January 2012 and given the title "Auto Vehicle Jump Star Emergency Jump Starter". No video of the promotion was put in evidence, nor was there any evidence about its contents and by whom, if anyone, it was viewed.
34. Fifth was an alleged offer for sale of a JUMPSTAR product on the UK Amazon website in February 2012. No evidence of the offer was produced and nothing was said about it by the witnesses.
35. Sixth was an alleged offer by SSEL to UK consumers of JUMPSTAR branded battery chargers by means of a readers' offer in September 2012. The offer was not produced and nothing more about it was adduced in evidence.
36. During the trial, by way of further evidence a letter dated 11 March 2014 was handed up by counsel for the defendants from Comet (UK) Ltd ("Comet") to Mr Samama of SSEL which stated that Comet had supplied the battery charger under the name JUMPSTAR to SSEL from 20 January 2012 to 30 November 2012. The letter does not state the numbers of products supplied and there was no evidence about onward sale of these products on the UK market.
37. In my view the evidence is not sufficient to show that the average consumer in the UK was aware on 11 October 2012 of the JUMPSTAR mark being used by parties other than the claimants in a manner such as to prohibit the mark from serving as a badge of origin.
38. I also think that to the extent that the average consumer was aware that the JUMPSTAR brand of battery chargers came from the claimants and other parties, it is possible that the message conveyed by the mark was that the products all came from a single source outside the UK. The fact that the average consumer believed that the product could be obtained from more than one UK supplier would not rob the mark of its capacity to serve as a badge of origin in that way.
39. In my view the allegation of invalidity pursuant to Art 3(1)(b) fails.

Article 3(2)(d) – Bad Faith

The law

40. Arnold J has reviewed the law on bad faith on two recent occasions, the later of them being Och-Ziff Management Europe Ltd v OCH Capital LLP [2010] EWHC 2599 (Ch); [2011] FSR 11.

"[34] I considered the law at some length in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] EWHC 3032 (Ch); [2009] RPC 9 at [166]–[193].

[35] Subsequently, the Court of Justice of the European Union (as it now is) ruled in Chocoladenfabriken Lindt & Sprüngli AG v Franz Haüswirth GmbH (C-529/07) [2009] ECR I-4893; [2009] ETMR 56 as follows:

"In order to determine whether the applicant is acting in bad faith …, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular:

– the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;

– the applicant's intention to prevent that third party from continuing to use such a sign; and

– the degree of legal protection enjoyed by the third party's sign and by the sign for which registration is sought."

[36] In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] EWCA 110 Civ, [2010] RPC 16 at [52] Lloyd L.J., with whom Jacob and Stanley Burnton L.JJ. agreed, summarised the guidance of the Court of Justice in Lindt as follows:

"Attention is to be focused on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. … The court regarded it as relevant that a third party had long used a sign for an identical or similar product capable of being confused with the mark applied for, and that that sign enjoyed some degree of legal protection. In such a case the applicant's aim in obtaining registration might be to compete unfairly with a competitor who is using a sign which had gained some degree of legal protection. The court also regarded it as relevant that the registered mark consisted of the entire shape and presentation of the product, that being restricted for technical or commercial reasons (in respect of which it no doubt had in mind, for example, the essential shape of a rabbit or a hare), so that the registration, if valid, would prevent competitors not only from using a particular sign but also from marketing similar products at all."

[37] Counsel for Och-Ziff submitted that neither the judgment of the Court of Justice in Lindt nor that of the Court of Appeal in Cipriani had affected the validity of what I had said in Cipriani in the following paragraphs, in particular in the passages emphasised:

"189. In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use of the mark, he may still believe that he is entitled to registration. The applicant may not intend to seek to enforce the trade mark against the third parties and/or may know or believe that the third parties would have a defence to a claim for infringement on one of the bases discussed above. In particular, the applicant may wish to secure exclusivity in the bulk of the Community while knowing that third parties have local rights in certain areas. An applicant who proceeds on the basis explicitly provided for in Article 107 can hardly be said to be abusing the Community trade mark system.

190. Nor in my judgment does it amount to bad faith if what the applicant seeks to register is not the actual trade mark he himself uses but merely the distinctive part of his trade mark, the other part of which is descriptive or otherwise non-distinctive, and third parties are also using the distinctive part with different non-distinctive elements. It is commonplace for applicants to apply to register the distinctive elements of their trade marks, and with good reason. Moreover, in such a case the applicant would be unlikely to have an Article 9(1)(a) claim against the third parties, yet as noted above counsel for the defendants accepted that the ability to make an Article 9(1)(b) claim was not enough to constitute bad faith."

Counsel for the defendants did not argue to the contrary."

(Original italics)

The defendants' case on bad faith

41. The defendants put their case on bad faith in this way, at paragraph 32 of the Amended Defence and Counterclaim:

"…the Applicant [for the Trade Mark] must have known or ought to have known of the prior use by unconnected third parties of the said name or mark in connection with goods similar or identical to those goods for which registration was sought, and the Applicant did not seek or gain permission from any such third parties prior to making the said Application."

The uses of JUMPSTAR by other parties relied on are those referred to above in connection with Art 3(1)(b) together with (i) the fact that Media Brands supplied the claimants with the JUMPSTAR product, which the claimants imported into the UK from June 2011 and (ii) the fact that Media Brands had told the claimants that Media Brands were the co-owners of the rights to the product and to the name JUMPSTAR.

42. As was pointed out by Arnold J in the passage I have quoted above, an applicant for a trade mark does not act in bad faith solely because he knows that other parties are using the mark in relation to the same goods or services. He may believe his is the superior right to the mark. The claimants' case was indeed that they had the superior right. Mr Sless, their managing director, said that at the time of the application he knew that SSEL was using the JUMPSTAR mark in the UK. He also said that he was told by Media Brands that although they did not manufacture the product, they co-owned the rights to it. Moreover, Mr Sless said that he was given to believe that Media Brands were in a position to determine who would have the exclusive rights to the product in the UK and separately who would have the right to use the name in the UK. I accept that evidence.
43. Counsel for the defendants pointed out that Mr Sless admitted first that he knew that Media Brands were only co-owners of the product and secondly that notwithstanding their claimed right to have the power to do so, Media Brands would not give the claimants exclusivity in the product in the UK because the level of business the claimants were able to offer was insufficient. It was submitted that this meant that the claimants must have realised when the application for the Trade Mark was made that the Trade Mark could never serve to indicate that the claimants were the sole source of goods sold under that mark. I reject this. Mr Sless's evidence was that he distinguished Media Brands' lack of willingness to sell the product itself exclusively to his companies from its willingness to sell the product under the JUMPSTAR trade name to the claimants alone in the UK. I see no reason to doubt that Mr Sless genuinely believed that his company would have the exclusive right to use the JUMPSTAR name in the UK and that any reasonable man of commerce in his shoes would have shared that belief.
44. As I have said, one possibility is that the average consumer would perceive the JUMPSTAR mark to denote a single source of the goods outside the UK, although this was not explored in the evidence. Witnesses for both sides confirmed that it was impossible to know whether there is, in fact, a single manufacturer in China of the product, or alternatively whether a different but single source of the products branded JUMPSTAR exists in China – a source which in turn supplies a variety of wholesalers. No one knew what the position was. To the extent that the Trade Mark was used in the UK before October 2012 by parties other than the claimants it may be that the mark JUMPSTAR in fact identified a single Chinese origin for the goods bearing the mark. On the evidence it is possible that Media Brands was the gatekeeper for the supply of JUMPSTAR goods to the UK. Whether it was or not, I accept that Mr Sless believed this to be the case and also believed that he was applying for the trade mark JUMPSTAR in the UK with the blessing of the gatekeeper and authorisation of the source of JUMPSTAR goods. It seems to me that objectively this was a reasonable belief in the circumstances.
45. The claim for invalidity on the ground of bad faith fails.

Defence under Art 6(1)(b)

46. The defendants did not in the end press their case under Art 6(1)(b) on the evidence, possibly on the ground that it stood or fell with the argument under Art 3(1)(c). That was the position of the claimants. I accept that contention. My finding regarding the alleged invalidity of the Trade Mark pursuant to Art 3(1)(c), in particular that the trade mark JUMPSTAR does not constitute an indication which may serve in trade to designate a characteristic of battery chargers, means in the present case that the defence under Art 6(1)(b) fails.

Person aggrieved

47. The claimants have a defence to the defendants' counterclaim of unjustifiable threats since the acts in respect of which proceedings were threatened constitute an infringement of the Trade Mark. Had the claimants not had the benefit of that defence, I would have found in favour of the defendants on the ground that at least SSEL is a person aggrieved. The claimants argued that the defendants had not established any damage or likelihood of damage pursuant to the threats. But if the threat is directed to the defendant the court will infer damage, see Brain v Ingledew Brown Bennison and Garrett [1997] FSR 511, at 517-521, approved by the Court of Appeal in Best Buy v Worldwide Sales Corporation España [2011] EWCA Civ 618; [2011] FSR 30.

Conclusion

48. I find that the Trade Mark is validly registered and has been infringed by the defendants. The claimants issued no actionable threat of infringement.