Equisafety Ltd v Battle, Hayward And Bower, Ltd & Anor [2021] EWHC 3296 (IPEC) (08 December 2021)

Equisafety Ltd v Battle, Hayward And Bower, Ltd & Anor [2021] EWHC 3296 (IPEC) (08 December 2021)

The 'Mercury' trademark is valid as it is not descriptive, customary, or registered in bad faith. The defendants' use of 'HyVIZ Silva Mercury Reflective' and 'Silva Mercury' is not identical to the 'Mercury' mark and does not infringe under s.10(1), but is sufficiently similar to cause a likelihood of confusion...

Source-derived case information.

Citation
[2021] EWHC 3296 (IPEC)
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
Intellectual Property Infringement and Passing Off / Judgment After Trial
Outcome
Claim allowed in part; counterclaim dismissed
Legal Topics
Trademark Infringement, Passing Off, Trademark Validity, Distinctiveness, Descriptiveness, Bad Faith Registration
Intellectual Property Trademark Law Trademark Infringement Passing Off Trademark Validity Distinctiveness Descriptiveness Bad Faith Registration

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Summary, issues, holding and outcome

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Parties

Equisafety Limited

Claimant

Battle, Hayward and Bower, Limited

First Defendant

Richard Michael Dewey

Second Defendant

Procedural Posture

Intellectual Property Infringement and Passing Off / Judgment After Trial

Legal Issues

  1. 1 Whether the 'Mercury' trademark is invalid for lack of distinctiveness, descriptiveness, customariness, or bad faith under s.3(1)(b)-(d), s.3(6) of the Trade Marks Act 1994
  2. 2 Whether the defendants infringed the 'Mercury' trademark under s.10(1), 10(2), and 10(3) of the Trade Marks Act 1994
  3. 3 Whether the defendants' actions constituted passing off

Ratio Decidendi

The 'Mercury' trademark is valid as it is not descriptive, customary, or registered in bad faith. The defendants' use of 'HyVIZ Silva Mercury Reflective' and 'Silva Mercury' is not identical to the 'Mercury' mark and does not infringe under s.10(1), but is sufficiently similar to cause a likelihood of confusion under s.10(2) and takes unfair advantage of the mark's reputation under s.10(3). The claimant has goodwill in the mark and the defendants' actions constitute passing off. The second defendant is not personally liable as a joint tortfeasor.

Court Disposition

Claim allowed in part; counterclaim dismissed

Orders

  • Declaration that the 'Mercury' trademark is valid
  • Injunction restraining the defendants from infringing the 'Mercury' trademark