Planet Art LLC & Anor v Photobox Ltd & Anor

Planet Art LLC & Anor v Photobox Ltd & Anor

The Claimants failed to demonstrate that the descriptive phrase 'FREE PRINTS' had acquired a secondary meaning sufficient to distinguish their business or that the Defendants' use was likely to cause actionable deception and damage. The balance of convenience, including the undertakings offered by the Defendants and the relative ease of quantifying damages, favoured refusal of the interim injunction. The undertakings provided sufficient protection pending trial.

Parties
Claimant: Planet Art LLC; Claimant: PlanetArt Limited; Defendant: Photobox Limited; Defendant: Photobox Free Prints Limited
Jurisdiction
England and Wales
Judgment Date
02 July 2019
Procedural Posture
Civil Intellectual Property (passing Off) / Interim Application for Injunction
Outcome
Application for interim injunction refused
Legal Topics
Passing Off, Interim Injunctions, Descriptive Marks, Goodwill, Balance of Convenience
Intellectual Property Civil Procedure Passing Off Interim Injunctions Descriptive Marks Goodwill Balance of Convenience

Case Brief

Summary, issues, holding and outcome

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Parties

Planet Art LLC

Claimant

PlanetArt Limited

Claimant

Photobox Limited

Defendant

Photobox Free Prints Limited

Defendant

Procedural Posture

Civil Intellectual Property (passing Off) / Interim Application for Injunction

Legal Issues

  1. 1 Whether the Claimants are entitled to an interim injunction restraining the Defendants from using 'FREE PRINTS' or 'PHOTOBOX FREE PRINTS' pending trial
  2. 2 Whether the Defendants' undertakings are sufficient in lieu of an injunction
  3. 3 Whether the Claimants have established a serious issue to be tried in passing off based on the use of descriptive words

Ratio Decidendi

The Claimants failed to demonstrate that the descriptive phrase 'FREE PRINTS' had acquired a secondary meaning sufficient to distinguish their business or that the Defendants' use was likely to cause actionable deception and damage. The balance of convenience, including the undertakings offered by the Defendants and the relative ease of quantifying damages, favoured refusal of the interim injunction. The undertakings provided sufficient protection pending trial.

Court Disposition

Application for interim injunction refused

Orders

  • The Claimants' application for interim injunction is refused.
  • The Defendants' undertakings as set out in correspondence dated 24 May 2019 are to be maintained pending trial.