Brands Bulletin- June 2012

A recent case (Lumos Skincare Limited v Sweet Square Limited and Others [2012] EWPCC 22) illustrates the danger of not registering your brands as trade marks and, instead, having to rely solely on the law of "passing-off" in order to protect your commercial interests.

For those of you not familiar with the tort of "passing-off", in order to succeed with an action in passing-off you need to prove three elements. Firstly, you have to establish a goodwill or reputation that is attached to the goods/services which you supply in the mind of the purchasing public, by association with some indentifying feature (e.g. a brand name), under which your particular goods/services are offered to the public, such that the feature is recognised by the public as distinctive specifically of your goods/services. Secondly, you must demonstrate that the defendant has made a misrepresentation to the public, leading or likely to lead the public to believe that the goods/services offered by him are your goods/services. Thirdly, you must demonstrate that you have suffered or are likely to suffer damage by reason of the defendant's misrepresentation.

In the Lumos case, the claimant was a UK company, which distributes skincare products under the mark "LUMOS". In particular, the claimant sells high end anti-ageing products. The claimant objected to the launch and sale by the defendants of a range of low cost nail care products, under the identical mark "LUMOS".

After a two day trial, the Court held that the claimant had made only a very modest use of the "LUMOS" mark in trade in the UK and thus, it had generated only a very modest goodwill in respect of the "LUMOS" mark in relation to skincare products. Furthermore, whilst both the claimant and the defendants were  engaged in the beauty industry, the Court held that there was a clear distinction to be made between the skincare and nail care markets. The Court was not convinced that the defendants' use of the (admittedly identical) mark "LUMOS", in respect of nail care products, would cause relevant consumers to be deceived and/or confused into thinking that the products came from the claimant.

Having read the Court's judgment, one can speculate as to whether a different outcome might have been reached had the claimant registered the mark "LUMOS" as a UK or Community registered trade mark and then sued the defendants for registered trade mark infringement.

In such a situation, the claimant would not have had to prove that it had a goodwill or reputation in the mark "LUMOS". Indeed, it would not even have had to prove that it had used the mark in trade, if the mark had been registered for less than five years.

Nor would the claimant have had to prove that there would be a misrepresentation, caused by the defendants selling nail care products under the mark "LUMOS". Instead, the claimant would only have had to prove that the defendants were using an identical mark in respect of similar goods (i.e. nail care products, as compared with skincare products) and that, as a result, there would be a 'likelihood of confusion', which is assessed differently to whether or not there has been a misrepresentation pursuant to the law of "passing-off".

Many trade mark law experts in this country consider that, more often than not, registered trade mark infringement cases are easier to win than "passing-off" cases. In the LUMOS case, if the claimant had registered the mark "LUMOS" for a broad range of beauty care products, including nail care products, then it would have been able to bring a straightforward case of registered trade mark infringement proceedings against the defendants (i.e. based on the fact that the defendants would have been using an identical mark to the claimant's mark, in respect of identical goods).

Thus, had the claimant, when launching its business, taken advice from a trade mark specialist and subsequently registered its mark "LUMOS" as a registered trade mark then it is certainly arguable that the claimant would have been able to prevent the defendants from trading under the mark "LUMOS" in respect of nail care products. The claimant's failure to register its mark meant that, instead, it was faced with bringing a more difficult "passing-off" action.

In our opinion, it is rarely ever ideal to have to rely on the law of "passing-off", in order to look to prevent a defendant's actions. Being able to bring a registered trade mark infringement action (whether in addition to, or separately from, a claim for "passing-off") is more often than not to a claimant's advantage - especially when it comes to trying to convince a defendant to stop doing the acts of which complaint is made.

If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of  Ashfords' IP Partners.

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