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IPEC raises the flag on flagpole Amazon sales with potential of trade mark trouble

Written by Ellis Sweetenham on 10 July 2017

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Jadebay Ltd and another v Clarke-Coles Limited (trading as Feel Good UK) [2017] EWHC 1400 (IPEC), [2017] All ER (D) 80 (Jun)

Facts:

The claimants were related companies with common shareholders.

The first claimant was the registered proprietor of a United Kingdom trade mark for the device mark 'Design Elements', which was registered in Class 20 for 'flagpoles plastic storage box garden furniture' (the trade mark).

The trade mark had been filed on 18 February 2013, and registered on 30 August. Prior to that registration, the first claimant had used the words 'DESIGN ELEMENTS' as an unregistered trade mark (the sign).

The first claimant licensed the second claimant to sell goods, including flagpoles, under the sign and the trade mark, under an oral licence agreement.

The claimants purchased flagpoles made by a manufacturer in China, packaged them in their own packaging, branded with the sign and/or trade mark. They imported them into the UK and sold them through two internet-based sales channels. The second claimant sold the flagpoles through listings on Amazon (the listings), which it had created itself.

A dispute arose because, after July 2012 and before 18 February 2013, the defendant decided to use the listings to sell its own flagpole product on the website 'Amazon.co.uk'. The claimants brought an action against the defendant, alleging, trade mark infringement and passing off.

Issues:

The Claimants argued that, by listing products for sale using the listings, which referred to flagpoles for sale ‘By DesignElements’, the Defendant had:

  1.  infringed the trade mark, pursuant to ss 10(2) and 10(3) of the Trade Marks Act 1994, in respect of sales on or after 18 February 2013
  2. passed off its product as the claimants' goods in relation to sales before that date.

It was for the court to determine if infringement had occurred

Decision:

The claim would be allowed in part.

Applying settled principles to the present case, and on the evidence, the defendant's use of the listings to sell the product after 18 February 2013 had infringed the trade mark, pursuant to s 10(2) of the Act.

However, the court would not be satisfied that the trade mark had a reputation amongst a significant part of the relevant public.

Accordingly, the claim for infringement, under s 10(3) of the Act, failed.

Further, applying settled principles to the facts, the defendant's use of the listings to sell the product before 18 February 2013 amounted to passing off.

The claimants were entitled to an injunction restraining the defendant from further infringement and passing off. The defendant would be ordered to pay the claimants the sum of £38,046.85 in damages.

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