Equisafety Limited v Battle, Hayward and Bower, Limited & Anor.

Equisafety Limited v Battle, Hayward and Bower, Limited & Anor.

The 'Mercury' trade mark was not descriptive, customary, or devoid of distinctive character, nor registered in bad faith. The defendants' use of 'HyVIZ Silva Mercury Reflective' and similar signs was sufficiently similar to the 'Mercury' mark and used in relation to identical or similar goods, giving rise to a likelihood of confusion and unfair advantage, thus infringing the trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994. The defendants' actions also amounted to passing off. The second defendant was not personally liable as a joint tortfeasor.

Parties
Claimant: Equisafety Limited; First Defendant: Battle, Hayward and Bower, Limited; Second Defendant: Richard Michael Dewey
Jurisdiction
England and Wales
Judgment Date
08 December 2021
Procedural Posture
Civil Intellectual Property / Judgment After Trial
Outcome
Claim for trade mark infringement and passing off against the first defendant (Battle, Hayward and Bower, Limited) succeeds; claim against the second defendant (Richard Michael Dewey) dismissed.
Legal Topics
Trade Mark Infringement, Passing Off, Trade Mark Validity, Bad Faith Registration, Distinctiveness, Likelihood of Confusion, Joint Tortfeasorship
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Trade Mark Validity Bad Faith Registration Distinctiveness Likelihood of Confusion +1 more

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Parties

Equisafety Limited

Claimant

Battle, Hayward and Bower, Limited

First Defendant

Richard Michael Dewey

Second Defendant

Procedural Posture

Civil Intellectual Property / Judgment After Trial

Legal Issues

  1. 1 Whether the 'Mercury' trade mark is invalid for lack of distinctiveness, descriptiveness, customariness, or bad faith under the Trade Marks Act 1994
  2. 2 Whether the defendants infringed the 'Mercury' trade mark under sections 10(1), 10(2), and 10(3) of the Trade Marks Act 1994
  3. 3 Whether the defendants' actions amounted to passing off

Ratio Decidendi

The 'Mercury' trade mark was not descriptive, customary, or devoid of distinctive character, nor registered in bad faith. The defendants' use of 'HyVIZ Silva Mercury Reflective' and similar signs was sufficiently similar to the 'Mercury' mark and used in relation to identical or similar goods, giving rise to a likelihood of confusion and unfair advantage, thus infringing the trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994. The defendants' actions also amounted to passing off. The second defendant was not personally liable as a joint tortfeasor.

Court Disposition

Claim for trade mark infringement and passing off against the first defendant (Battle, Hayward and Bower, Limited) succeeds; claim against the second defendant (Richard Michael Dewey) dismissed.

Orders

  • Declaration that the 'Mercury' trade mark is valid and infringed under sections 10(2) and 10(3) of the Trade Marks Act 1994
  • Declaration of passing off by the first defendant