Turbo-K Ltd v Turbo-K International Ltd [2020] EWHC 2078 (Ch) (05 August 2020)

Turbo-K Ltd v Turbo-K International Ltd [2020] EWHC 2078 (Ch) (05 August 2020)

TKL had acquired goodwill in the 'Turbo-K' name and logo prior to TKIL's registration. TKIL's use and registration of the mark constituted passing off and was liable to be prevented under the law of passing off. TKIL's UK trade mark registration was invalid due to TKL's prior rights and was also made in bad faith. TKIL's counterclaims for infringement failed as TKL's use was protected by its prior rights.

Citation
[2020] EWHC 2078 (Ch)
Parties
Claimant/part 20 Defendant: Turbo-K Limited; First Defendant/part 20 Claimant: Turbo-K International Limited; Fourth Defendant: Rony Roselli; Fourth Party: Oliver Harald Platz
Jurisdiction
England and Wales
Judgment Date
05 August 2020
Procedural Posture
Intellectual Property / Final Judgment
Outcome
TKL's claims succeed; TKIL's counterclaims dismissed.
Legal Topics
Passing Off, Trade Mark Invalidity, Trade Mark Infringement, Bad Faith Registration
Intellectual Property Business Law Passing Off Trade Mark Invalidity Trade Mark Infringement Bad Faith Registration

Case Brief

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Parties

Turbo-K Limited

Claimant/part 20 Defendant

Turbo-K International Limited

First Defendant/part 20 Claimant

Rony Roselli

Fourth Defendant

Oliver Harald Platz

Fourth Party

Procedural Posture

Intellectual Property / Final Judgment

Legal Issues

  1. 1 Whether TKIL is liable for passing off against TKL
  2. 2 Whether TKIL's UK trade mark is invalid due to TKL's prior rights and/or bad faith
  3. 3 Whether Mr Roselli is personally liable for TKIL's acts of passing off

Ratio Decidendi

TKL had acquired goodwill in the 'Turbo-K' name and logo prior to TKIL's registration. TKIL's use and registration of the mark constituted passing off and was liable to be prevented under the law of passing off. TKIL's UK trade mark registration was invalid due to TKL's prior rights and was also made in bad faith. TKIL's counterclaims for infringement failed as TKL's use was protected by its prior rights.

Court Disposition

TKL's claims succeed; TKIL's counterclaims dismissed.

Orders

  • Declaration that TKIL's UK trade mark No.2582207 is invalid and to be removed from the register
  • Injunction restraining TKIL from passing off and using the 'Turbo-K' name and logo