Redd Solicitors LLP v Red Legal Ltd & Anor [2012] EWPCC 54 (18 December 2012)

Source-derived case information.

Citation: [2012] EWPCC 54
Parties: Claimant: Redd Solicitors LLP; First Defendant: Red Legal Limited; Second Defendant: Martin Crighton
Jurisdiction: England and Wales
Judgment Date: 18 December 2012
Procedural Posture: Trade Mark Infringement and Validity / Judgment After Trial
Outcome: Claimant succeeds in infringement and validity claims; partial revocation refused; own name defence rejected; personal liability claim dismissed.
Legal Topics: Trade Mark Infringement, Partial Revocation, Own Name Defence, Likelihood of Confusion, Bad Faith, Passing Off, Specification Narrowing

Intellectual Property Trade Marks Trade Mark Infringement Partial Revocation Own Name Defence Likelihood of Confusion Bad Faith Passing Off +1 more

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Full judgment text Downloadable case file Legal principles 3 Authorities cited 14 Party arguments 2 Amounts and remedies 5

Parties

Redd Solicitors LLP

Claimant

Red Legal Limited

First Defendant

Martin Crighton

Second Defendant

Procedural Posture

Trade Mark Infringement and Validity / Judgment After Trial

Legal Issues

1 Whether REDD mark should be partially revoked for lack of genuine use in certain services
2 Whether Red Legal infringed the REDD and RED marks
3 Whether own name defence applies

Ratio Decidendi

Redd has made genuine use of the REDD mark for a range of legal services, not limited to intellectual property, so partial revocation is refused and specification remains 'legal services'. Use of RED LEGAL for licensed conveyancing creates likelihood of confusion and infringes the REDD mark under Art 9(1)(b) CTM Regulation. Own name defence fails as use was not in accordance with honest practices. The RED mark is valid and infringement is established. Mr Crighton is not personally liable.

Court Disposition

Claimant succeeds in infringement and validity claims; partial revocation refused; own name defence rejected; personal liability claim dismissed.

Orders

REDD mark specification remains 'legal services'
Red Legal's use of RED LEGAL infringes REDD mark

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