[The IPKat] [Guest post] Retromark Volume XVI: the last six months in trade marks

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[Guest post] Retromark Volume XVI: the last six months in trade marks

Darren Meale of Simmons & Simmons presents the sixteenth volume in his rundown of notable trade mark cases over the past six months. Here we go:

Retromark Volume XVI: the last six months in trade marks

by Darren Meale

There’s no shortage of interesting cases this round, and plenty of variety within them too. Of particular note is the emergence of post-SkyKick jurisprudence on bad faith and broad specifications, tackled in not one but two of the nine cases considered below.

1. Morley’s still beat Metro’s even without the help of intoxicated revellers

Morley's (Fast Foods) Ltd v Nanthakumar [2025] EWCA Civ 186 (March 2025)

The defendants were owners or franchisees of “Metro’s” fried chicken restaurants (founded 2015, a “small chain”). The claimant operated Morley’s fried chicken restaurants (founded 1985, now 100 outlets). Some of their competing marks and signs are in the table below. At trial HHJ Melissa Clarke held the defendants liable for trade mark infringement. The defendants appealed to the Court of Appeal.


Permission was granted on eight grounds, three of them relating to the effect of a previous settlement agreement between the parties. Arnold LJ, giving judgment on behalf of the Court of Appeal, dismissed all eight grounds relatively quickly – leaving me wondering why he felt the appeal worthy of permission at all.

Several of the grounds were really relatively minor challenges to the similarities of the marks. A complaint (ground 4) that the trial judge allowed the context of use (the competing shops sharing very similar get-up including brick walls and red and white interior tiles) to establish a likelihood of confusion was rejected as it was clear she merely found it to increase the likelihood. Ground 1 was the most interesting, concerning the nature of the average consumer. The trial judge had assessed from the perspective of two categories, the first – low-income children, young people, students and families – which would pay medium-to-low attention. The second category comprised “late-night and early-morning revellers … who are likely tired, hungry and a significant subset of which will be intoxicated” which would only pay a low degree of attention. Arnold LJ did not like the inclusion of intoxicated individuals within the definition of the average consumer. He also did not like confining them to purchasing at specific times of the day. Nevertheless, this was not a material error as he felt the judge would have found a likelihood of confusion even if she had considered the question from the perspective of only her first category.

The rejection of some real-world characteristics of the average consumer seems to push that legal fiction away from one that is able to adapt to the specific circumstances of the case (and here, the claimant’s own evidence of its customer base) to a more rigid construct, seeming to depart from Floyd J’s comments in London Taxi that the average consumer can be split into several classes, which should not be averaged – as relied on by the trial judge in para 78 of her first instance decision and notwithstanding that the same authority was acknowledged by Arnold LJ. Indeed, Arnold LJ held that “[t]hus there is a single class of consumers consisting of those who patronise such establishments”. Does he mean to say that one should never “salami slice” into different classes, or that such a slicing was not justified (or rather, as this is an appeal, was not rationally supportable) on the facts?

IPKat here.

2. Small Claims Track costs are fine for IP claims, now that EU law is dog-gone

Makeality Ltd v City Doggo Ltd [2025] EWCA Civ 400 (April 2025)

This blog has a fondness for cases featuring doggos dating back to Volume II’s coverage of the Zuma case. Here, both parties sold litter boxes. As the owner of a pandemic puppy which began its life in a London flat, these disgusting devices are nevertheless rather useful. The claimant’s product was PIDDLE PATCH. The defendant’s was OUI OUI PATCH, but it had also used the name “piddlepatch” in various ways. The claimant objected to both uses and sued it for trade mark infringement in the IPEC. On application by the defendant, HHJ Hacon, the presiding judge of the IPEC, transferred it to the IPEC Small Claims Track (SCT). The chief consequences of this were that the case would be managed in a simple way, heard in a trial lasting no more than a day, with very limited costs recovery for the winning party.

A Oui Oui Patch (doggo not included)

The claimant was not happy and sought permission to appeal to the Court of Appeal. Arnold LJ granted it, heard the appeal, and upheld HHJ Hacon’s case management decision. Two grounds of appeal were considered.

The first was largely around the exercise of the judge’s discretion, including his view that, on balance, the claimant was likely to recover less than £10,000 in damages, making the case suitable for the SCT. The Court of Appeal upheld that decision, noting that the claimant was challenged to evidence a claim value above this sum but failed to do so. This outcome seems inevitable, it being quite rare indeed for a case management decision of this type to be overturned. If it were not for the second ground of appeal, surely Arnold LJ would have simply declined permission to appeal on this ground and saved everyone a lot of time and money.

The second ground might have been the reason the case made it to the Court of Appeal in the first place. Under this ground, the claimant argued that retained EU law required IP cases to be heard in a forum which would allow for significant costs recovery by the winning party under Article 14 of the Enforcement Directive. In the pre-Brexit world the claimant probably had a point. But times have changed. Despite the continued relevance of EU law and jurisprudence being a potentially complex topic, Arnold LJ dealt with it rather succinctly, laying out a series of challenging obstacles for the claimant including a “decisive” one in the form of the Retained EU Law (Revocation and Reform) Act 2023, which removes the principle of supremacy of EU law from English law and rendered it impossible for the claimant to claim either that Article 14 enjoyed direct effect or by relying on the Marleasing principle.

So a non, non for the claimant – no oui, oui here. IPKatDog here.

3. SkyKick in action: total refusal of encyclopaedic specification in religious hoo-ha

Unite the Union v Unite Faith Workers’ Fellowship (Anglican Foundation) O/0369/25 (May 2025)

Directors of the applicant, some sort of religious organisation claiming to undertake research and events each likely of a theological nature (perhaps even an ecumenical matter, Ted?), were in a dispute with the opponent, the trade union Unite. The applicant filed for UNITE FAITH WORKERS’ FELLOWSHIP in Class 35. The specification comprised 2,789 items using 16,268 words with everything from accountancy to xerography covered, including activities as diverse as bookkeeping, management of professional athletes, retail of lubricants and window dressing, an Olympic sport I’d pay to see.

A specification of such obvious disingenuity provided the perfect opportunity for the Hearing Officer at the UKIPO to apply SkyKick, having suspended this opposition to await the Supreme Court’s decision at the end of last year. The Hearing Officer was satisfied that a prima facie claim of bad faith was established on the basis of the “very broad and disparate” specification combined with the opponent’s evidence of the applicant’s “Branch Secretary’s” criticism of the opponent along with his use of the opponent’s mark. The applicant offered no real explanation for the breadth of its services or indeed any evidence or argument beyond a basic defence, meaning it failed to rebut the prima facie case.

Interestingly, in those circumstances the Hearing Officer found the whole of the application to have been made in bad faith, sparing nothing, even the many references to research, an activity mentioned in the applicant’s defence. The prevailing view was that SkyKick would provide a route to narrowing down a long or overly broad specification, rather than a mechanism for knocking one out entirely, but evidently not responding to a legitimate allegation of bad faith can now lead to a total refusal. IPKat here.

Shortly after this decision the UKIPO published PAN 1/25, its new practice note on examination practice following SkyKick. Well worth a read here.

4. Parts 1 to 3 of the Crystal Vape saga – an injunction, an appeal and a costly caper

Bargain Busting Ltd v Shenzhen SKE Technology Co Ltd [2025] EWHC 1239 (Ch) (May 2025)
Shenzhen SKE Technology Co Ltd v Bargain Busting Ltd [2025] EWHC 1629 (Ch) (July 2025)
Shenzhen SKE Technology Co Ltd v Bargain Busting Ltd [2025] EWHC 1705 (Ch) (July 2025)

Three judgments in the same case in the same volume might be a record for Retromark. SKE markets vapes under the name CRYSTAL BAR and other CRYSTAL-formative marks (and very successfully – sales of over $400m in the UK in 2024). BB is a competing user of CRYSTAL-formative marks. It appears SKE may have been the first user and when a dispute between the parties brewed, BB acquired several earlier registered trade marks from third parties (CRYSTAL CLEAR VAPOURS ELECTRONICS CIGARETTES and CRYSTAL ADDICT) to deploy against SKE. One hell of a fight ensued, in court as well as before the UKIPO.


The first judgment discussed here is a rare preliminary injunction which Miles J in the High Court granted prohibiting BB from making further threats of infringement proceedings against third party distributors and retailers of SKE’s goods. BB had already written to 11 such persons, later joining four to the court proceedings and reserving its rights against the other seven. Miles J ordered they not threaten anyone else. SKE’s case was that BB had acted in a manner designed to apply maximum commercial pressure to its commercial partners, without really intended to follow through with proceedings against all parties. BB countered that its threats were justified as it had valid claims against all 11. The judge sided with SKE, clearly concluding that BB had acted to disrupt SKE’s business and that it might try to do so again. BB resisted this conclusion on a host of bases, including on human rights grounds, but none were quite enough.

The second judgment was an appeal heard by Michael Tappin QC sitting as a Deputy High Court Judge from a UKIPO decision rejecting SKE’s opposition against BB’s acquired application for CRYSTAL BAR. A consequence of that rejection was that seven of SKE’s applications were rejected in oppositions by BB relying on CRYSTAL BAR. In its opposition, SKE had claimed it had sufficient goodwill at the time of filing of BB’s acquired application that it was entitled to prevent registration by way of passing off. The Hearing Officer held that SKE’s evidence of goodwill was insufficient, amounting to little more than 30,000 units at $2 each sold to single distributor (but none to end users) along with a “soft launch” event. The appeal failed, the judge finding no error of law or principle and no rationally insupportable conclusions. One can see that another Hearing Officer might have taken a different view on the evidence, but the bar is set higher than that on appeal. The decision is a reminder that first use in the UK does not win the day and that goodwill requires a more tangible presence on the market. I can start a business, invest in advertising and even secure my first customer but I might still lose if someone else files a competing trade mark application before I do.

The third judgment is a mere 12 paragraphs on costs. BB sought costs on an indemnity basis for reasons which included their view that the appeal was hopeless. The judge disagreed and preferred to award costs on the standard basis. He was also unimpressed with BB’s £123,916 costs claim for a half-day appeal on a single issue, requiring production of a single skeleton argument. Both the solicitor and counsel fees were criticised with the judge awarding £75,000, about 60% recovery.

It seems certain that part 4 onwards of this battle will appear in future Retromark volumes. IPKat here.

5. Iconix awoken in the Supreme Court to find its win in the Court of Appeal was nothing but a dream…

Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 (June 2025)

The basics of this battle of football boot logos will be known to many, and if not you can catch up in Volume XIV. The trial judge said no infringement and the Court of Appeal overturned this. The Supreme Court restored the trial judge’s decision, criticising the Court of Appeal’s interference while agreeing with its assessment of the law on post-sale confusion. The Court of Appeal was persuaded that there was a likelihood of confusion when the marks in question were viewed from an angle on footwear, as seen from head height by a viewer looking down. In the Supreme Court appeal, Dream Pairs (DP) did not dispute that “realistic and representative viewing angles” could be taken into account, but only when and how.

My key points of the joint judgment of Lord Briggs and Lord Stephens (with which the three other Supremes agreed) are:
  • First, DP argued that extraneous circumstances, such as how the goods are marketed or perceived post-sale, should not be taken into account in assessing similarity between the marks (the “similarity” issue). DP’s argument was that similarity was determined on a side-by-side analysis, and if it was established there then post-sale factors (including realistic and representative viewing angles) could come into play as part of the final global assessment test. The Supreme Court disagreed citing five reasons. These included that CJEU jurisprudence was against DP, and that by leaving consideration of the extraneous circumstances to the global assessment, that would cut out of that assessment cases which would pass the similarity test when realistic and representative viewing angles were considered. In essence, as it was accepted that these viewing angles were relevant to one stage of the confusion assessment, it was not prepared to rule them out of another.
  • Secondly, DP argued that post-sale confusion should only be actionable where there is confusion at the point of a subsequent sale or in a subsequent transactional context (the “confusion” issue). This seems to me to be another way of saying that the impact of post-sale confusion is sidelined to merely a factor in establishing confusion at point of sale. It does not stand alone. DP did not try simply to argue that post-sale confusion was just not relevant at all, with the Supreme Court noting that this would have been untenable given the ample authority to the contrary. DP’s position on the confusion issue was rejected for six reasons, chiefly that the authorities were supportive not against post-sale confusion. The most convincing reason for me is that under section 10(4) of the Trade Marks Act 1994, use of an infringing mark in advertising is actionable – and of course there is not necessarily a sale at the point of advertising (try buying a product from a billboard).
  • But finally, even though neither the similarity nor the confusion issue held water, the Supreme Court still chose to restore the trial judge’s decision. The reason for this is that the Court of Appeal should not have interfered with it. The primacy of the trial judge’s conclusion on the evidence and submissions in a case of multi-factorial assessment is well-established, and it is for those reasons that we would previously expect trade mark appeals which cannot identify an error in law to fail. Having recently indicated across several judgments a willingness to disturb these assessments on the grounds of irrationality, the Court of Appeal has been criticised. In paragraph 114 of the judgment, Lord Briggs and Lord Stephens called out the Court of Appeal as having imposed their own differing view of what the outcome should be, rather than assess whether the trial judge’s view was a rational one.
The similarity and confusion issues of law were interesting enough to justify the Supreme Court granting permission in this case, even though it upheld the Court of Appeal’s approach to them. What is most notable for me is the Supreme Court’s admission at paragraph 11 that it was only because of those interesting issues that permission was granted. Permission was not granted because of the complaint of unjustified interference – but once the case was “in” because of the other issues, it was open for the Supreme Court to overturn the Court of Appeal on this basis. To put it another way, if Dream Pairs did not have the good fortune to have novel points of law to deploy, it would have been hard luck.

Finally, although it was clear that this case was never going to wipe post-sale confusion from our jurisprudence, I do think that including it within the infringement test is a choice which has been made and developed in our jurisprudence with the effect of broadening trade mark rights beyond their traditional badge of origin foundations. That ship has sailed but I would have seen nothing wrong with making a different choice, that is to say your trade mark is no use to you unless someone is confused when they buy the rival product intending to buy yours. As to the inclusion of “realistic and representative viewing angles” in the assessment of post-sale (or even pre-sale) confusion, I am not 100% convinced. Had the trial judge shared Arnold LJ’s view, Iconix would have won not because the competing marks were too close to each other, but that, viewed from a particular angle such that one or both of them looked different to they would do side-by-side, they were too close. This appears to broaden the scope of a trade mark not just to what it looks like on the register, but to what it would look like in other “realistic and representative” conditions, and not just on what part of the body the mark is placed. Might it be realistic and representative, for example, to consider what the marks look like during inclement weather? It does, after all, rain rather a lot in the UK.

IPKat here.

6. PROHEALTH—Skeletons, Sanctions, and the Perils of AI—A Cautionary Tale from the UKIPO*

Pro Health Solutions Ltd V Prohealth Inc BL O/0559/25 (June 2025)

When considering how to behave at a hearing before the UKIPO, two tips that you’d expect would be blindingly obvious are “don’t make things up” and “be prepared to explain your skeleton argument if asked”. Sadly, while current generative AI models can undoubtedly be used to enhance or improve written legal work, they are not always able to prevent foolishness.

In this battle over PROHEALTH trade marks, the opponent succeeded at the UKIPO and the applicant appealed to the Appointed Person (the one-shot non-court route of appeal for oppositions). On the merits, the appeal was dismissed in about 15 paragraphs: the AP satisfied that the Hearing Officer’s finding that the opponent had established sufficient goodwill for the purposes of a passing off claim was rationally supportable.

The other 30 paragraphs were dedicated to addressing misuse by the applicant (a litigant in person) of ChatGPT and the opponent’s representative’s questionable skeleton argument. As to the former, the applicant admitted to using ChatGPT to create a skeleton argument, which sounds like it was largely nonsensical (the AP was rather more polite in his description of it): fabricated citations; made up quotes; inaccurate summaries; irrelevant arguments. The opponent’s trade mark attorney, on the other hand, cited cases which did not appear to be relevant, and could not explain their relevance or the origin of propositions he made when questioned by the AP. Clearly unhappy (or at least quite concerned) by the behaviour before him, the AP noted that he had limited ability to sanction this behaviour within the Appointed Person jurisdiction.

In the end, the applicant litigant in person was saved any serious sanction, the AP instead calling upon the UKIPO to adopt standard wording in its correspondence to flag the risks of using artificial intelligence and the seriousness of using it in a manner which may fabricate or otherwise mislead the Office. As for the trade mark attorney, he escaped referral to IPReg, the AP settling instead for a public condemnation which will no doubt have caused the attorney in question some considerable embarrassment.

GenAI has reached an interesting stage. It is very easy to use it to create legal content which, to the untrained eye, sounds enlightened. But skill is still required to use it in a manner which will enhance, impress or compete with competent human lawyers.

*title written by the S&S GenAI, Percy

7. Delphic sub-licensees considered in High Court’s interpretation of licence registration obligations

Lifestyle Equities CV v Sportsdirect.com Retail Ltd [2025] EWHC 1417 (Ch) (June 2025)

Given the regularity with which it appears in Retromark, Lifestyle Equities must be one of those rare beasts that relishes its day in court – although this case relates to proceedings which kicked off 10 years ago. Here it had sued well-known retailer SportsDirect in 2015 for trade mark infringement, largely won in 2018, and finally kicked off an inquiry as to damages in 2023. In that quantum claim, Lifestyle Equities sought to recover not just its own losses but also losses of at least one sub-licensee – apparently inflating the size of their claim well beyond how SportsDirect envisaged it eight years prior.

In this judgment, the High Court decided an application by SportsDirect for summary judgment against this head of recovery on the basis that the sub-licensees were not parties and that the grant of their licences had not been registered. The facts surrounding the licensing arrangements of Lifestyle Equities were described by the High Court as “Delphic” and “shrouded in obscurity”, with key details apparently not clear or not disclosed. The second claimant was the exclusive licensee of the first claimant, but there also appeared to be another “licensee”, Harvest, which the judge decided must be a sub-licensee of the second claimant. Why this fact (or the reality behind it) was apparently obscured is unknown.

Under the Trade Marks Act 1994, licences must be registered if licensees are to benefit from the protections in section 30 and 31. Section 31, which relates to exclusive licensees, was not relied upon and so the Court was required to consider the effect of sections 30(6) and 30(6A) – which provide that losses of licensees shall be taken into account and/or that licensees can intervene to be compensated for that loss – but only in the context of sub-licensees.

The judge concluded that sub-licensees could not be joined to proceedings (although had a right to intervene section under 30(6A)). The trade mark owner and/or an exclusive licensee could instead claim for (or at least have “tak[en] into account”) losses of a sub-licensee. The judge held that such a claim was possible even if the sub-licence had not been registered, although non-registration would prevent the sub-licensee from seeking directions regarding the holding of compensation on its behalf. A sub-licensee was also free to register its licence late, there being no time limit prescribed in the Act. Finally, late registration by a sub-licensee did not engage the cost sanctions in section 25(4).

As a consequence, SportsDirect’s application was largely unsuccessful, but the judge nevertheless expressed sympathy with its intentions – the application having been brought to try to tackle a very late introduction into the claim of the apparently significant losses of somewhat mysterious sub-licensees, full details of which the judge directed would need to be provided forthwith in the enquiry as to damages. The judge did leave open whether or not Lifestyle Equities would ultimately be permitted to collect still as yet unparticularised amounts on behalf of Delphic sub-licensees, a question not of statutory construction but of case management of late amendments to pleadings.

8. Was it Wise to sue for infringement when you could be sued too?

WISE Payments Ltd v With Wise Ltd & Ors [2025] EWHC 1722 (IPEC) (July 2025)

The claimant was previously known as Transferwise. It began life around 2011 offering money transfer and foreign currency conversion services, before expanding into a wider range of financial services for businesses, including accounting software; a facility to make bulk payments; a payroll solution; and a debit card. By 2018 or so it began to shift towards the shorter name Wise a change which appears to have been completed in 2021. In March 2020, the defendant adopted the name Wise, offering an onboarding system for logistics companies which included recruitment, onboarding of delivery drivers and compliance tools, but it also offered an invoicing product and an accountancy product to drivers. It seems that the defendant’s business had some payroll and invoicing aspects although this was plainly not its focus.

As the claimant rebranded and the defendant expanded, customers begin to contact one by email or phone when they intended to contact the other. The claimant sued for trade mark infringement and passing off while the defendant counterclaimed for passing off while also attacking the claimant’s trade mark registrations on the basis of bad faith and its earlier goodwill.

Like the Unite case above, the bad faith attack followed the UKSC’s guidance in SkyKick. It succeeded in forcing “computer software; application software” to be narrowed to a list of specific financial services software, but failed to do the same to “financial services”. The judge, Recorder Ms Amanda Michaels, felt that all of these terms were “broad and imprecise”, but that something more was needed to raise an inference to rebut the initial assumption that these terms were applied for in good faith, thereby requiring that the claimant justify its claiming of the terms. Based on limited evidence before her, the judge was satisfied that an inference was raised in respect of software but not financial services. The burden then shifted to the claimant, who had not filed any evidence to explain its filing strategy – and so the finding of bad faith for software followed.

When it came to the conflict analysis, some time was devoted to identifying what goods and services of the defendant were actually subject to complaint, and what goods and services it had in fact offered. The judge concluded that the defendant offered “payroll services” which were identical or highly similar to the claimant’s “financial affairs”. The judge also held that the defendant had offered “software which at the least provides the generation, provision or submission of invoices“ which was identical or similar to the claimant’s software as narrowed down following the bad faith claim. Having then considered evidence of alleged confusion and a variety of other factors, the judge concluded that there was a likelihood of direct confusion between the WISE logo registration shown in the table above and the defendant’s signs. However, there was no likelihood of confusion with the claimant’s TRANSFERWISE word mark and a 10(3) claim based on the reputation of that mark also failed, as did the claimant’s passing off claim.

What about the defendant’s passing off counterattack? That was also successful in relation to the claimant’s “payroll services (including arranging for payroll payments) and invoice services”.

The judge noted that the “parties’ overall businesses are very different, but there is that area of overlap in the services they provide” and it seems that her judgment leads to circumstances whereby both parties are infringing the other’s rights within that area of overlap. Quite what the form of order will look like – and whether injunctions will be sort which effectively prohibit both parties from providing payroll and invoicing services – remains to be seen.

On bad faith, if the approach taken in this case and Unite is followed elsewhere it would appear that bad faith claims will routinely lead to at least a narrowing of specifications. If so, we’ve come some way since the CJEU’s 2020 judgment in SkyKick, which at the time I felt set rather a high bar for a finding of bad faith, including a requirement that there be “objective, relevant and consistent indicia” tending to show abusive behaviour. I had previously interpreted the word “consistent” to imply a pattern of behaviour over time, concluding in previous commentary that bad faith would be harder to establish as a one-off. But there was no sign of consistent misbehaviour here, rather just enough to shift the burden to the Claimant.

IPKat here.

9. No trade mark, no goodwill, no hope in Notting Hill

Courtenay-Smith v The Notting Hill Shopping Bag Company [2025] EWHC 1793 (IPEC) (July 2025)

This case concerned the right to use the signs THE NOTTING HILL SHOPPING BAG and THE NOTTING HILL SHOPPER BAG on, you guessed it, bags. While one might expect this to be resolved by way of a simple comparison of those two highly descriptive marks, it was far from so straightforward. The claimants (with the second claimant being NHBCL, Notting Hill Bag Company Ltd) lost because:
  • They could not rely on a trade mark for THE NOTTING HILL SHOPPING BAG because the registration had ceased to exist. This unfortunate situation came to be (and I simplify) because the entity which owned the mark was dissolved, causing the registration to be owned by the Crown as bona vacantia. A related entity then paid the renewal fee, but of course had no authority to do so at the time rendering the renewal void.
  • They could not rely on goodwill from earlier use because they had never owned it, and there had been no assignment of that goodwill. Further, the goodwill of the dissolved company had been destroyed by the act of dissolution.
  • While they did own a bare copyright in a “logo” form of their mark – depicted below – the minimal creativity behind the logo gave it a low scope of protection which was not infringed by the defendants’ very similar “logo”, also depicted below, despite it being found that the defendants knew of the claimants’ bags when they created their own.

The 343 paragraph judgment is an interesting read, touching on a number of unusual issues. The non-renewal is particularly fascinating, as the judgment indicates that the claimants and their legal advisors had all of the pieces of the puzzle before them along with the picture they were trying to make, but they failed in their task because they put them together in the wrong order. The fragility of goodwill is also a noteworthy point, the trial judge relying on passages of Wadlow (the authoritative passing off practitioners’ text) to find it destroyed in one fell swoop.

After all of these technical troubles the claimants were nearly able to save the day by relying on copyright stemming from a logo which is little more than their mark written in a standard font over four lines. If copyright is obtainable from such a simple process, as was held here, it would seem that many trade marks can acquire an additional layer of protection in this manner by adopting them in the simplest of layouts and stylisations, with no registration fees payable either. That said, the finding of subsistence was not followed by a finding of infringement, even though copying was proven. The judge felt that the low scope of protection meant that infringement would only follow in respect of a “close copy”. Despite these marks looking pretty close to me, the judge was satisfied that the differences (three lines not four, all caps, no lowercase “t” and a different font) were enough to prevent a finding of substantial reproduction in the context of the narrow scope of protection.

IPKat here.

***

Thanks to my colleagues Esse Ejere and Ray Lama for helping me collate this volume.

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