A recent judgment has seen trade mark law applied in the world of apps. Photobox's app icon was found to infringe PlanetArt's registered UK trademark protecting its 'FREEPRINT' app icon: Photobox's branding was too close and held to infringe.

Other aspects of Photobox's branding did not amount to trade mark infringement or passing off. But while confirming that there is no tort of targeting (and seeking to take key features of) a rival's business as such, the judge made clear his view that some of Photobox's other uses were, euphemistically, "antisocial non-distancing", and suggested that the final costs award would reflect this.

The judgment of Daniel Alexander QC (sitting as a deputy judge) in PlanetArt LLC & Anr v Photobox Limited & Anr [2020] EWHC 713 (Ch) provides a thorough review of trade mark law in a very modern context.

The law on trade mark infringement and passing off - a brief refresh and what's new

First, the judge considered the tort of infringement under s.10(2) of the Trade Marks Act 1994 ("TMA"), which is where: the sign complained of is identical or similar to the registered mark; the use complained of is in respect of goods and services identical or similar to those registered for the mark; and the use complained of is UK-based, in the course of trade and without proprietor consent, resulting in a likelihood of confusion to the average consumer (Comic Enterprises v Fox[1]).

The average consumer is deemed to be reasonably well informed, but seldom able to make direct comparisons; relying on an imperfect picture from memory. The average consumer perceives a mark as a whole (or has a "global appreciation"), assessing the overall impression with an eye on distinctive or dominant components (Specsavers v Asda[2]).

To these well-established principles, the judge added that the sign complained of must be evaluated in the context in which it is actually used.

Second, the judge considered the tort of infringement under s.10(3) TMA, which is where: the sign complained of is identical or similar to a registered mark; the registered mark has a reputation in the UK; the use complained of is in the course of trade concerning goods or services; the use gives rise to a link between the offending sign and the registered mark to the average consumer; and the use causes at least one of (a) detriment to the distinctive character of the mark, (b) detriment to the repute of the mark, or (c) unfair advantage being taken of the distinctive character or repute of the mark; and is "without due cause" (Interflora v Marks and Spencer[3]).

The judge said that:

  • On the assessment of "detriment", the descriptiveness of the registered mark is key. A trader has "less right to complain" of dilution to its brand if it has "chosen a mark which is of limited distinctiveness in the first place".
  • Detriment to distinctive character might occur where the claimant felt "obliged to make their mark more different from that of a newcomer in order to maintain the same level of recognition". It could also take the form of diminishing the average consumer's ability to pick out the claimant's goods and services.
  • To establish "unfair advantage" (also known as "free-riding"), intention is not required, but the court should be mindful that while it is one thing to live dangerously, it is another to intend to deceive.
  • In assessing whether use is "without due cause", the judge reiterated the need to balance the trade mark proprietor's need to safeguard the mark's "essential function" and other economic operators' need to denote their products and services. He elaborated that:
    1. Whether other economic operators are justified in using the sign to denote their products and services should be evaluated by reference to the mark as a whole. If a mark is a combination of elements, it should be considered whether use of the combination of elements (not just some) are justified;
    2. The defendant need only establish due cause where an unfair advantage or detriment to the mark has been found;
    3. The more descriptive the mark or where elements are less likely to have trade mark significance (e.g. colour, design), the easier due cause will be to establish; and
    4. The extent to which "due cause" needs to be established is proportionate. The greater the intrusion into the trade mark proprietor's legitimate interests, the "stronger" the defendant's justification will need to be.

Third, the judge considered the tort of passing off. 

In order to succeed in a claim of passing off, the claimant must establish: (a) goodwill or reputation attached to the goods or services by association with the identified "get-up", (b) misrepresentation by the defendant to the public (intentional or otherwise) that goods or services offered are those of the plaintiff; and (c) damage engendered by the misrepresentation.

On the assessment of misrepresentation in the case of marks with common descriptive elements, the judge said that where a defendant omits use of its own brand in circumstances where a prima facie descriptive term has become distinctive of a claimant, consumers will consider the term a brand. Prominently displaying one's own brand, "descriptivises" a term. As a point of legal policy, a tolerated level of deception is justified to avoid brand owners monopolising descriptive terms, raising the threshold for confusion translating into actionable misrepresentation.

Facts underlying the dispute

PlanetArt (the claimant) has a registered UK trade mark for its app icon, including the (composite) wording "FreePrints" shown below, left (the "App Icon"), for goods and services including downloadable and mobile app software goods (class 9) and photographic printing services (class 40). Photobox (the defendant) used for its own app the icon shown below, right, which included the (non-composite) wording "Free Prints" under the image:

As well as Photobox's app icon, PlanetArt complained of Photobox's presentation of its app on the Apple App Store page. The judge provided the following comparison of the parties' respective presentations:

The outcome in the High Court

PlanetArt alleged that Photobox had targeted its app to compete directly with PlanetArt's business, copying PlanetArt's presentation to the public with confusing branding, in order to trade off PlanetArt's reputation and dilute PlanetArt's brand.

The judge considered that the goods and services that Photobox was providing (phone-based photo service printing) were identical to the goods and services of PlanetArt's registration.

Considering, first, whether Photobox's app icon infringed PlanetArt's trade mark:

Applying the test for infringement under section 10(2) TMA, the judge was mindful of the importance of context. "FreePrints" and "Free Prints" were significantly similar, but he questioned whether this was particularly important in the context of apps downloaded and invoked by simply clicking on them. Visually, the marks were not significantly different. The marks did not really have 'conceptual' content. This was also a case where it was important to compare the respective marks as a whole rather than seizing upon similarities and differences in individual features.

As part of his global assessment, the judge noted key points of context for photo-printing apps in the App Store:

  • Where an app uses a term with descriptive words (in the icon or first part of a composite app name), primary words will more likely connote a brand, with descriptive words that follow viewed as mere description; 
  • Words appearing under an app icon will more likely connote a brand; and
  • With so many shapes and styles of app icons to choose from, it is reasonable to expect an app provider to take reasonable steps to ensure that its icon design is sufficiently different from a direct competitor.

Ultimately the judge held that Photobox's app icon infringed, his reasoning including that: 

  • It was invariably the case that the words beneath the logo were a brand rather than descriptive of the service in question and so had "trade mark significance"; this was reinforced by the Apple App Store's guidance that app names should appear below the app; and
  • Although the Photobox app icon could be "distinguished upon close inspection", there was no other photo-printing service app that was more similar, featuring as it did "a two-colour turquoise and white design where the turquoise is the background colour and is substantially a homogenous colour field […] and the design appears as a somewhat “spindly” almost-line drawing like picture".

Applying the test for infringement under section 10(3), the judge considered that the very widespread use of Photobox's icon on the screens of millions of phones was likely to have diminished the ability of PlanetArt's registered mark to act as PlanetArt's reliable "face". This amounted to material damage to PlanetArt's distinctive character sufficient to warrant judicial intervention. Further, Photobox's icon had benefitted from the reputation and goodwill of PlanetArt's registered mark, notwithstanding that this was not intended.

These consequences were also "without due cause". In particular, it was unjustifiable for Photobox to have used, like in PlanetArt's App Icon, words in the position where ordinarily a brand name would appear and in combination with other elements which it was not necessary to have chosen and which did not use Photobox branding at all.

The judge then considered whether other aspects of Photobox's branding infringed the trade mark - i.e. the presentation of its app in the Apple's App Store, the name of its app, branding and the "free prints".

The judge noted that unlike in its app icon, in these other contexts Photobox's name was displayed prominently and in a position and manner where ordinarily consumers would expect a brand to be found, so the words "Free Prints" were clearly being used in a descriptive way. Bearing in mind "media chatter" for apps there was also ample opportunity for incidents of confusion to be raised (but a lack of instances of actual confusion). In these circumstances, a likelihood of confusion was not found, and so these aspects of Photobox's branding did not infringe under section 10(2).

Likewise for 10(3), the prominence of Photobox's name meant that the use of the words "free prints" would appear descriptive. This meant that neither of the detriment components of the test was met, and nor was the use without due cause. So the presentation of Photobox's app in the Apple's App Store, the name of its app, branding and the "free prints" did not infringe under section 10(3) either. Taken as a whole, the use was justifiable.

Turning to passing off, the judge concluded that the tort had not been established for any of Photobox's uses.

The judge was satisfied that PlanetArt had goodwill in the App Icon as a whole, and some goodwill in the composite "FreePrints" term and the visual aspects of the icon. However, the uses complained of did not, on the evidence, amount to a misrepresentation. The judge's reasoning here included that Photobox's non-composite term "Free Prints" was not used alone and Photobox's app icon only appeared after the user had encountered the brand Photobox. Photobox had, on balance, done sufficient to distinguish their business from that of PlanetArt for the purpose of passing off.

What next for the PlanetArt v Photobox case?

The judge ordered a period of 28 days, with a possible stay of proceedings and mediation, to enable parties to make constructive proposals to give effect to the ruling. Encouraging the defendants to "reflect" and consider adopting a "more respectful attitude" to better distinguish themselves from competitors, he indicated that a significant portion of the reasonable standard costs should be paid by Photobox to PlanetArt, despite Photobox's success in defending PlanetArt's claims in respect of its wider branding.

Comment

The judgment in PlanetArt v Photobox represents a thorough review and application of trade mark law and (independently) passing off in the context of apps and downloadable software. The judge took the opportunity to fire a warning shot over sharp practice, flagging a need for parties to keep distance from competitors' branding.

The judgment illustrates too a key difference between registered trade mark law and passing off. One of the purposes of the former is to provide an element of exclusivity in the use of a registered mark regardless of the wider context in which it is used, so long as the conditions for protection are fulfilled; but this is not a purpose of the latter.

This difference underpins the difference in outcome between PlanetArt's (successful) claims of trade mark infringement and (unsuccessful) claim of passing off in respect of Photobox's icon. Nevertheless, in a different case, on different facts, the different components of the tort of passing off may assist a brand owner in ways that trade mark law does not reach.

Footnotes

[1] [2016] EWCA Civ 41
[2] [2012] EWCA Civ 24
[3] [2012] EWCA Civ 1501