Not so FUNTIMES: Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner Limited t/a Trespass  EWHC 118
Written by Fatima Amedu on 30 January 2019« Return to Reading Room
Luen Fat Metal and Plastic Manufactory Limited (‘Luen Fat Metal Limited’) are the proprietors of a series of three trade marks (‘FUNTIME, FUN TIME, and FUN-TIME) in class 28 (toys, playthings, sporting articles and video apparatus) that was registered in the EU. In addition, the EU registration contained a note stating that the mark was ‘inherently distinctive’ and further evidence had been submitted demonstrating that it had acquired distinctiveness at the time of the application through use of its marks. Consequently, when Trespass (an internationally owned sportswear band specialising in outdoor clothing) started selling goods under the trade mark ‘FUNTIME’, Luen Fat Metal Limited alleged infringement of its EU mark.
The above infringement claim was assessed in accordance to UK law under the Trade Mark Act 1994 (TMA).
The main issues for the court to decide upon was whether the FUNTIME marks owned by Luen Fat Metal Limited were inherently distinctive. If the question could not be answered in the affirmative, then it had to consider whether the marks had acquired distinctiveness through use.
In reaching his judgment, Douglas Campbell likened the consumer to the average adult buying toys for young children. He contemplated that there would be a lower level of attention paid by the consumer to the trade mark. However, as Luen Fat Metal Limited could demonstrate that it had used its EU mark descriptively (in and advert), the judge felt that the average consumer would have to ignore the ‘clues’ (certain symbols that demonstrate ownership of the EU trade mark and the word “World of FunTime”) that were indicative of the trade mark’s origin.
In conclusion, Douglas Campbell did acknowledge that the EU trade mark ‘FUNTIME’ did have a ‘low degree’ of inherent distinctiveness, as it did convey an ‘indirect’ reference to a characteristic of the goods. Nevertheless, he asserted that the law (section 3 (1) (c) TMA) only prohibited trade marks that consist ‘exclusively’ of the specified characteristic. Section 3 (1) (c) of TMA states the following:
“(1) The following shall not be registered—
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,..”
As a result, the EU mark which may at first glance has been considered a ‘write off’ as descriptive, was considered to have some inherent descriptiveness. Nevertheless, one has to consider the court’s willingness to find inherent distinctiveness if Luen Fat Metal Limited had not had strong evidence of acquired distinctiveness (some of the Luen Fat Metal Limited sold its goods on Amazon and other store retailers e.g. TKMaxx.
In deciding whether Trespass had infringed Luen Fat Metal Limited’s EU trade mark, the court reviewed the section 10 (2) and (3) TMA. Section 10 (2) and (3) TMA state the following:
“(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the course of trade, [in relation to goods or services,] a sign which—
(a) is identical with or similar to the trade mark...
(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
After considering the above section, the court decided that Trespass had infringed the EU trade mark as the average consumer would have thought that Trespass’ logo indicated that its goods were being sold by a sub-brand or co-brand. In addition, as Trespass used a very similar mark in a class that was identical to Luen Fat Metal Limited, the court found sufficient grounds of infringement.
In considering section 10 (3) TMA, the court had to consider article 9 (2) European Trademark Regulation (‘EUTMR’). Article 9 (2) states the following:
“Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;
(b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.” 
After considering the above, the court stated the following in relation to Trespass and Luen Fat Metal Limited’s trade mark in the UK:
1) The mark did have sufficient reputation in the UK;
2) Luen Fat Metal Limited’s use of its trade mark created a sufficient link in the mind of the average consumer;
3) Trespass’ use of the mark negatively impacted the distinctiveness of Luen Fat Metal Limited’s mark in the UK;
4) Trespass received an unfair advantage from of the distinctive character of Luen Fat Metal Limited’s mark; and
5) Trespass used the mark without permission.
Want to speak
Complete the form below and we’ll call you back free of charge.