Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors [2016] EWHC 2911 (Ch) (18 November 2016)

Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors [2016] EWHC 2911 (Ch) (18 November 2016)

The First Defendant's bidding on the Claimant's trade marks as keywords and the resulting advertisements did not enable normally informed and reasonably attentive internet users to ascertain the origin of the goods or services, thereby adversely affecting the origin function of the Claimant's marks and constituting infringement. The defence of honest concurrent use was not made out because the First Defendant's conduct, particularly the substantial increase in keyword bidding from 2012 and the use of confusingly similar signs in advertisements, went beyond inevitable confusion and exacerbated it. Estoppel and statutory acquiescence defences failed. The Defendants' counterclaim for passing...

Citation
[2016] EWHC 2911 (Ch)
Parties
Claimant: Victoria Plum Limited (trading as 'Victoria Plumb'); First Defendant: Victorian Plumbing Limited; Second Defendant: Mark Radcliffe; Third Defendant: Coral Phones Limited
Jurisdiction
England and Wales
Judgment Date
18 November 2016
Procedural Posture
Intellectual Property Trade Mark Infringement / High Court Trial Judgment
Outcome
Claim for trade mark infringement succeeded; defences and counterclaim dismissed.
Legal Topics
Keyword Advertising, Trade Mark Infringement, Honest Concurrent Use, Likelihood of Confusion, Online Advertising, Passing Off
Intellectual Property Trade Marks Keyword Advertising Trade Mark Infringement Honest Concurrent Use Likelihood of Confusion Online Advertising Passing Off

Case Brief

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Parties

Victoria Plum Limited (trading as 'Victoria Plumb')

Claimant

Victorian Plumbing Limited

First Defendant

Mark Radcliffe

Second Defendant

Coral Phones Limited

Third Defendant

Procedural Posture

Intellectual Property Trade Mark Infringement / High Court Trial Judgment

Legal Issues

  1. 1 Whether the First Defendant's bidding on the Claimant's trade marks as keywords constitutes trade mark infringement under UK and EU law
  2. 2 Whether the defence of honest concurrent use applies to keyword advertising
  3. 3 Whether the presentation of the First Defendant's advertisements enables normally informed and reasonably attentive internet users to ascertain the origin of the goods or services

Ratio Decidendi

The First Defendant's bidding on the Claimant's trade marks as keywords and the resulting advertisements did not enable normally informed and reasonably attentive internet users to ascertain the origin of the goods or services, thereby adversely affecting the origin function of the Claimant's marks and constituting infringement. The defence of honest concurrent use was not made out because the First Defendant's conduct, particularly the substantial increase in keyword bidding from 2012 and the use of confusingly similar signs in advertisements, went beyond inevitable confusion and exacerbated it. Estoppel and statutory acquiescence defences failed. The Defendants' counterclaim for passing...

Court Disposition

Claim for trade mark infringement succeeded; defences and counterclaim dismissed.

Orders

  • Injunction granted restraining the First Defendant from bidding on the Claimant's marks as keywords and from using confusingly similar signs in advertisements.
  • Defendants to pay damages or account of profits to be determined.