Luen Fat Metal and Plastic Manufactory Limited v Jacobs & Turner trading as TRESSPASS [2019] EWHC 118 (IPEC)

Background: Luan Fat Metal and Plastic Manufactory Limited (LFMPM) owned a UK Trade Mark Registration for FUNTIME, FUN TIME, FUN-TIME covering “Games, toys and playthings; electronic games”.

LFMPM also owned an EU Trade Mark registration for FUNTIME for the identical goods listed above. The EU registration included a note: “The trade mark was inherently distinctive, but evidence was submitted to show that, by the date of application, the mark has in fact acquired a distinctive character as a result of the use made of it.”

LUMPH alleges that Jacobs & Turner use of a number of signs infringed its marks – as pictured – so Douglas Campbell QC had to decide on the following questions;

Were the trade mark registrations for FUNTIME distinctive and valid either inherently, or if the marks had acquired distinctiveness through use?

Whether Jacobs & Turner use of the words FUN TIME amounted to trade mark infringement?

Did the FUNTIME marks have a reputation in the UK?

Campbell found the answer to be “yes” to all these questions and the reasoning is summarised below.

The FUNTIME mark has a low degree of inherent distinctiveness, because it does make an indirect allusion to a characteristic of the goods. In view that the mark was found to be distinctive, the test for acquired distinctiveness wasn’t examined to any length other than reference was made to number of different retailers that sold FUNTIME toys including Amazon, Morrisons and The Entertainer.

Consideration was given then to TRESPASS mark being present on the packaging and if that could prevent the likelihood of confusion.  Campbell did not think so and concluded that even if TRESSPASS was well known the average consumer would still probably have thought that FUNTIME was owned by TRESSPASS, or at least some economic connection between the two.  Campbell concluded that there was likelihood of confusion and therefore the requirements for infringement had been met.

Campbell also concluded that FUNTIME marks do have a reputation in the UK and the use by Jacobs & Turner gave rise to a link in the mind of the average consumer – and this use causes detriment to the distinctive character of the FUNTIME mark and took unfair advantage of the distinctive character without due cause.

 Comment: This is an interesting recent case for several reasons, as it shows the importance of clearing a potential mark for use and /or registration before going to market. A clearance search will flag up any potential obstacles, because the use of a house mark does not necessarily prevent or limit any likelihood of confusion on the part of the public.

If you have any questions or would like further information about clearing potential signs, then please contact me via email at [email protected]