Kitfix Swallow Group Ltd v Great Gizmos Ltd [2008] EWHC 2723 (Ch) (12 November 2008)

Kitfix Swallow Group Ltd v Great Gizmos Ltd [2008] EWHC 2723 (Ch) (12 November 2008)

The use by Great Gizmos of 'Sequin Art' constituted infringement of KSG's Community Trade Mark under Article 9(1)(a) as the sign was identical and used for identical goods. The mark 'Sequin Art' was found to be distinctive, not merely descriptive, and had acquired distinctiveness through use. There was a likelihood of confusion among the relevant public. The Article 12 defence failed as the use was not in accordance with honest practices, and passing off was established. The challenge to the validity of the CTM failed.

Citation
[2008] EWHC 2723 (Ch)
Parties
Claimant/part 20 Defendant: Kitfix Swallow Group Limited; Defendant/part 20 Claimant: Great Gizmos Limited
Jurisdiction
England and Wales
Judgment Date
12 November 2008
Procedural Posture
Intellectual Property Infringement and Passing Off Claim With Counterclaim for Invalidity of Community Trade Mark / Liability Judgment (not Damages)
Outcome
Claim for infringement and passing off succeeds; counterclaim for invalidity fails.
Legal Topics
Community Trade Mark Infringement, Passing Off, Trademark Validity, Likelihood of Confusion, Descriptiveness Vs Distinctiveness, Article 9(1)(a) and (b) Community Trade Mark Regulation, Article 12 Defence, Article 7(1)(b) and (c), Acquired Distinctiveness
Intellectual Property Trademark Law Community Trade Mark Infringement Passing Off Trademark Validity Likelihood of Confusion Descriptiveness Vs Distinctiveness Article 9(1)(a) and (b) Community Trade Mark Regulation +3 more

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Parties

Kitfix Swallow Group Limited

Claimant/part 20 Defendant

Great Gizmos Limited

Defendant/part 20 Claimant

Procedural Posture

Intellectual Property Infringement and Passing Off Claim With Counterclaim for Invalidity of Community Trade Mark / Liability Judgment (not Damages)

Legal Issues

  1. 1 Whether the use of 'Sequin Art' by Great Gizmos infringes KSG's Community Trade Mark under Article 9(1)(a) and/or (b)
  2. 2 Whether 'Sequin Art' is descriptive or distinctive and thus whether the CTM is valid
  3. 3 Whether there is passing off by Great Gizmos

Ratio Decidendi

The use by Great Gizmos of 'Sequin Art' constituted infringement of KSG's Community Trade Mark under Article 9(1)(a) as the sign was identical and used for identical goods. The mark 'Sequin Art' was found to be distinctive, not merely descriptive, and had acquired distinctiveness through use. There was a likelihood of confusion among the relevant public. The Article 12 defence failed as the use was not in accordance with honest practices, and passing off was established. The challenge to the validity of the CTM failed.

Court Disposition

Claim for infringement and passing off succeeds; counterclaim for invalidity fails.

Orders

  • Declaration of infringement of Community Trade Mark
  • Declaration of passing off