Alice Ltd v Photogram Ltd & Ors | [2024] EWHC 3256 (IPEC)

This recent trade mark infringement case, involving the UK registered trade mark ALICE (UK00003362772), saw a successful s.10(1) and s.10(2) Trade Marks Act 1994 (“TMA”) claim.

Background

The ALICE trade mark (owned by the claimant) is registered for goods and services in Classes 9 and 37, which cover audio and audiovisual apparatus and instruments, as well as their repair and maintenance. The defendants launched a crowdfunding campaign in 2021 for a product called the “Alice Camera”—a digital camera designed to attach to smartphones. As part of their promotion, the defendant used ALICE CAMERA and ALICE signs.

The Law

The IPEC looked at the following sections of the TMA:

• Section 10(1): Prohibits the use of identical marks on identical goods or services.
• Section 10(2): Addresses the use of a sign that is similar to a registered trade mark and the likelihood of confusion.
• Section 46: Deals with revocation of a trade mark for non-use.

Legal Findings

The court ruled that the defendant had infringed the ALICE mark under sections 10(1) and 10(2)(a) TMA by using the identical ALICE sign. Furthermore, the court found infringement under section 10(2)(b) due to the use of the highly similar (visually, aurally and conceptually) ALICE CAMERA sign and likelihood of confusion.

Counterclaim

The court rejected the defendants’ counterclaim for revocation, finding that the claimant had presented substantial evidence of genuine use (e.g. in relation to selling music equipment such as mixing decks and amplifiers). The claimant’s use of the ALICE mark was not token or minimal; it was a commercial activity that was clearly established in the market

Key Takeaways

This case serves as a vital reminder of the importance of genuine use in maintaining trade mark protection. Companies should ensure that their trade marks are not only registered but are also being actively used to avoid the risk of revocation. On the other hand, the case highlights the importance of clearance searches before committing to branding, so as to avoid using an identical or similar sign to one already registered.

As businesses continue to innovate and expand, understanding and adhering to trade mark law remains essential to safeguarding their brand identity – which is where Briffa can help.