Equisafety Limited v Battle, Hayward and Bower, Limited & Anor.
Decision date: 8 December 2021
Neutral citation: [2021] EWHC 3296 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This dispute concerned Equisafety’s "Mercury" trade mark for high-visibility equestrian products and Battle’s sale of items labelled "HyVIZ Silva Mercury Reflective" (HVSMR). The court rejected invalidity and bad-faith challenges to the registered mark, found Battle’s signs not identical but sufficiently similar to cause a likelihood of confusion and to take unfair advantage of the mark’s reputation, and held Battle liable for trade mark infringement (s.10(2) and s.10(3)) and for passing off. Claims against Battle’s managing director, Mr Dewey, for joint liability were dismissed.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
From the facts found, the court treated a word as descriptive under s.3(1)(c) only if the average consumer would immediately and unambiguously perceive it as describing the goods; "Mercury" was not so perceived. Timing alone (filing immediately after complaint) did not establish bad faith under s.3(6); subjective dishonest intention had to be proved and was not. A composite or longer sign incorporating an earlier word is not necessarily identical to that word for s.10(1), but moderate similarity combined with identical or similar goods can establish a likelihood of confusion under s.10(2), and use may create a link and unfair advantage under s.10(3).
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The court observed that an element within a composite sign can retain an independent distinctive role even if not dominant, and that surrounding descriptive elements can make that element more noticeable. It also noted that broadly drafted specifications in a later trade mark application do not of themselves demonstrate bad faith as to the goods actually used.