Luen Fat Metal And Plastic Manufactory Ltd v Jacobs & Turner Ltd (t/a Trespass)
Decision date: 12 December 2018
Neutral citation: [2019] EWHC 118 (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 case concerned Luen Fat's FUNTIME trade mark registrations (UK and EU) for toys and the defendant's use of "FUN TIME TOYS" on packaging bearing its TRESPASS house mark. The court held FUNTIME was not excluded as descriptive, had acquired distinctiveness in the UK, and that the defendant's use amounted to trade mark use causing a likelihood of confusion — infringing under s.10(2) (and Art 9(2)(b) for the EU mark). The UK mark was also found to have a reputation and the defendant's use took unfair advantage/diluted that reputation in breach of s.10(3); the invalidity counterclaim was 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 judgment, a mark falls within s.3(1)(c) only if the relevant public would immediately, without further thought, perceive it as descriptive of the goods or their characteristics; a low degree of inherent distinctiveness does not compel invalidity if the mark is not exclusively descriptive. Acquired distinctiveness is to be judged by factors such as market share, duration/intensity/geographical spread of use and promotion, and can be established by substantial and longstanding UK use and distribution evidence. Whether contested use is trade mark use and infringes under s.10(2) depends on presentation, context and consumer perception (including ordinary consumers of low attention) and whether that leads to a likelihood of confusion.
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 judge observed that the presence of a prominent house mark on the same packaging does not necessarily prevent consumers from perceiving a second sign as indicating a separate commercial origin or economic connection. The judgment also noted that subjective intention to take advantage of a reputed mark is not required to establish unfair advantage or detriment under s.10(3), though absence of direct evidence as to authorization of the packaging limited findings on intent in the particular case.