The claimant, Equisafety, makes and sells high visibility products for horse riders. It sells some of its products using the mark ‘mercury’.
The first defendant, Battle, started selling products, including some similar to that of Equisafety, using the label ‘HyVIZ Silva Mercury Reflective’. The second defendant was Battle’s managing director.
Equisafety emailed Battle demanding that it stopped using the label. The next day, Equisafety applied to register the trade mark ‘mercury’.
Battle continued using the label and even expanded the range. Equisafety claimed that Battle’s activities constituted passing off, and, after the trade mark was registered, trade mark infringement. The defendants denied this and counterclaimed that the mark was invalid because the mark was registered in bad faith, and/or that it was descriptive.
It was concluded that there was a likelihood of confusion such that the average person is likely to assume that the two brands have some kind of association. It was held that Battle had infringed Equisafety’s trade mark, and their actions had constituted passing off.
When considering whether ‘mercury’ was descriptive, the court held that the average customer may be aware that mercury is silver, but would not immediately assume that ‘mercury’ was descriptive of the reflective silver colour of the goods. It was held that, in this context, ‘mercury’ was clearly being used as a brand. The court therefore concluded that ‘mercury’ was not descriptive.
When considering whether Equisafety had goodwill in the mark, weight was put on the fact that in their advertising, they had sponsored a leading dressage rider, and had significant social media presence. It was commented that, because Battle did not provide further evidence, there was an inference that whoever was responsible for the use of ‘mercury’ in Battle’s branding would have been aware of Equisafety’s use of the mark. Regardless, they were clearly aware after receiving the email, and continued to produce and even expand the range. They had therefore gained an unfair advantage from using the ‘mercury’ mark.
The court held that Battle did not even come close to proving bad faith. Equisafety was clearly making use of the mark and had goodwill. It was considered that even though there were some goods where there was no intention to use the mark, this did not stop the application being valid for the rest of the goods, which included the reflective products in question. Further, the goods which were registered with no intention of use were not goods which Battle sold, so the motivation to include these goods could not have been to undermine Battle’s position. Battle highlighted that the trade mark application was filed by Equisafety the day after it had written to Battle, and was made with the intention of enabling them to bring proceedings, but it was found that this did not in itself constitute bad faith.
In this case, the unregistered right of passing off was found to have been infringed, as well as trade mark infringement. However, the threshold required to show passing off is higher than that for trade mark infringement. It is therefore important to make trade mark applications for any marks that you wish to protect. Briffa can advise on all aspects of trade mark protection and infringement.
Written by Laura Gathercole, Paralegal
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