Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors

Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd & Ors

The first defendant's bidding on the claimant's trade marks as keywords constitutes infringement because the resulting advertisements do not enable normally informed and reasonably attentive internet users to ascertain origin, causing substantial confusion. Honest concurrent use does not justify bidding on the claimant's marks, and the first defendant's increased expenditure exacerbated confusion beyond what is inevitable. The second defendant is not jointly liable due to lack of sufficient involvement. The claimant's own keyword bidding on the first defendant's name constitutes passing off.

Parties
Claimant: Victoria Plum Limited; 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 / Final Judgment
Outcome
The first defendant is liable for infringement of the claimant's trade marks. The second defendant is not jointly liable. The first defendant's counterclaim for passing off is successful.
Legal Topics
Trademark Infringement, Passing Off, Keyword Advertising, Honest Concurrent Use, Statutory Acquiescence, Joint Tortfeasance
Intellectual Property Trademark Law Trademark Infringement Passing Off Keyword Advertising Honest Concurrent Use Statutory Acquiescence Joint Tortfeasance

Case Brief

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Parties

Victoria Plum Limited

Claimant

Victorian Plumbing Limited

First Defendant

Mark Radcliffe

Second Defendant

Coral Phones Limited

Third Defendant

Procedural Posture

Intellectual Property / Final Judgment

Legal Issues

  1. 1 Whether bidding on the claimant's trade mark as a keyword constitutes trademark infringement
  2. 2 Whether honest concurrent use is a valid defence in the context of keyword advertising
  3. 3 Whether the claimant is estopped or has acquiesced to the defendant's use

Ratio Decidendi

The first defendant's bidding on the claimant's trade marks as keywords constitutes infringement because the resulting advertisements do not enable normally informed and reasonably attentive internet users to ascertain origin, causing substantial confusion. Honest concurrent use does not justify bidding on the claimant's marks, and the first defendant's increased expenditure exacerbated confusion beyond what is inevitable. The second defendant is not jointly liable due to lack of sufficient involvement. The claimant's own keyword bidding on the first defendant's name constitutes passing off.

Court Disposition

The first defendant is liable for infringement of the claimant's trade marks. The second defendant is not jointly liable. The first defendant's counterclaim for passing off is successful.

Orders

  • Injunction against the first defendant from further infringement by bidding on the claimant's marks as keywords.
  • Declaration that the second defendant is not jointly liable.