Not a FUNTIME for Trespass at the IPEC

This judgment serves as a reminder that the proximity of a well-known brand will not necessarily remedy a sign that may serve to confuse consumers.

The claimant was a Chinese manufacturer specialising in children’s toys and games. It owned a UK series mark for FUNTIME (also FUN TIME and FUN-TIME) for products in class 28 including games, toys and electronic games. It also owned an EU mark for the word FUNTIME. The parties agreed that nothing in the judgment turned on the minor differences found in the UK series mark and, with exception of one minor point, the UK and EU marks were treated equally for the purposes of infringement and validity.

The background to the claim is reasonably simple: the defendant was the well-known outdoor goods company Trespass, which began using the words FUN TIME in stylised form on the packaging of several products aimed at children, including a kite and water guns. The Trespass logo was also clearly displayed on the packaging, which it said was relevant to whether the average consumer would understand that the product was from Trespass, and not another entity.

The claimant brought infringement proceedings in the IPEC in the basis of sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994 (and the equivalent provisions under EU law), but by the time it came to trial, the judge was asked only to consider infringement on the basis of 10(2)(b) and 10(3).

Trespass counterclaimed for invalidity of the trade mark on the alleged grounds that FUNTIME was devoid of distinctive character (s. 3(1)(b) of the 1994 Act) and/or that FUNTIME consisted of a sign which serves in trade to designate the kind, quality, intended purposes or other characteristics of the goods for which the claimant’s trade marks are registered (s. 3(1)(c) of the 1994 Act). By the time of trial, the defendant accepted that s. 3(1)(b) added nothing to its argument, and ran only arguments under s 3(1)(c) at trial.

As is typical in UK judgments, validity was considered first. The judge, Mr Recorder Douglas Campbell QC, considered a reasonably recent decision, Devin AD v EUIPO (T-122/17), which succinctly summarises how a sign would be caught by the prohibition in section 3(1)(c): “…there must be a sufficiently direct and specific link between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods or services in question or one of their characteristics” (emphasis added).

Not surprisingly, the judge determined that, although the goods were aimed at young children, it is the adults buying the goods that are the “average consumer”. The judge thought that the average consumer would give the mark/sign a low level of attention. The judge’s view was that FUNTIME did not cause the average consumer to immediately perceive a description of the goods, and it would not be sufficient even if each of the constituent elements (FUN and TIME) were themselves descriptive. The judge said on several occasions: “The average consumer would not immediately and without further thought perceive the word FUNTIME to mean that using the [toys] could result in an enjoyable time”. On the contrary, he said, further thought would be required to reach that conclusion.

The judge concluded that the trade mark did make an indirect allusion to a characteristic of the goods, but despite this held that the mark was inherently distinctive (although to a low degree). However, to fall foul of the prohibition, the mark must consist “exclusively” of the specified characteristics, which, he held, FUNTIME did not.

In relation to infringement, the judge was asked to consider two key issues:

1. was the defendant’s use of the sign “use as a trade mark”; and
2. did the presence of the defendant’s own trade mark prevent any likelihood of confusion.

In relation to issue 1), the judge considered whether the use of a stylised FUN TIME logo was use “for the purpose of distinguishing the goods and services”. He held that the average consumer would not regard the logo as anything other than trade mark use, and was clearly for the purpose of distinguishing the goods from others. In relation to the proximity of the defendant’s logo on the packaging, the average consumer (particularly one paying little attention) would likely regard FUN TIME as being a sub-brand of Trespass.

In relation to issue 2), the judge rejected the argument that the relative strength of the defendant’s brand-power would be sufficient to overcome consumer confusion where FUNTIME and the Trespass mark are used in close proximity.

The judge considered the decision in Frank Industries PTY Ltd v Nike Retail BV [2018] EWHC 1893 (Ch) where Nike failed on similar arguments. If anything, the judge concluded, the average consumer would likely have thought FUNTIME was owned by Trespass, or was in some way economically linked.

Having found infringement under section 10(2)(b), the judge considered infringement under section 10(3) and deftly held that that the UK mark did have a reputation in the UK, which provided a link in the mind of the average consumer causing detriment to the distinctive character of the mark without due cause.

Infringement under 10(3) was also established. Having found infringement, the judge chose not to consider infringement under the equivalent provision under EU law, which is a reasonably tricky area, and was not required in this instance.