App icon incorporating text “free prints” infringed figurative trade mark incorporating identical text and registered for photographic printing services (High Court)
The High Court has ruled that the use of an icon incorporating the text “free prints” in relation to a device-based photo printing service app infringed a figurative trade mark incorporating the text “freeprints” and registered for photographic printing services. However, it dismissed claims in passing off and for revocation of the first defendant’s registered trade mark PHOTOBOX FREE PRINTS as having been registered in bad faith and contrary to the claimants’ earlier rights in passing off.
The claimants had launched their app providing access to a dedicated mobile phone-based photo printing service. The mark comprised an icon consisting of a turquoise square featuring the white outline of a butterfly, which appeared on a customer’s phone screen once the app was downloaded.
The defendants’ app had an icon comprising a turquoise box featuring the white outline of a polaroid photo. It provided a similar service to the claimants’ app. (Images of the signs are available via the case link below.)
Mr Daniel Alexander QC (sitting as a Deputy Judge of the Chancery Division) held that the services in respect of which the parties’ marks were used were the same or similar, and that there were significant similarities in the marks’ aural and visual elements, with some more limited conceptual similarity. Taken together, and having regard to the reputation attaching to the claimants’ icon, the similarities between the marks taken as a whole were sufficient to give rise to a likelihood of confusion.
In relation to passing off, the claimants’ goodwill in the mark was insufficient for the word “freeprints” to denote the claimants’ business. Further, the defendants’ use of the text “Photobox FreePrints” did not amount to a misrepresentation that their goods and services were connected to those of the claimants. Therefore, the defendants had not caused the claimants damage.
Since the defendants’ activities had not amounted to passing off, their registration of the PHOTOBOX FREE PRINTS mark was not liable to be prevented on that ground.
In respect of bad faith, the initial element of the mark, PHOTOBOX, had a prominent distinctive character, having been the defendants’ brand which they had used for a considerable time. There was a significant difference between a trader making a trade mark application which sought legitimately to protect its own business and which used its own mark as the most prominent element, and a mark that was applied for in bad faith.
Case: PlanetArt LLC and another v Photobox Ltd and another  EWHC 713 (Ch) (25 March 2020) (Mr Alexander QC Sitting as a Deputy Judge of the Chancery Division).