A recent decision of a Judge of the English High Court [2020] EWHC 713 provides a possible approach to the enforcement of trademark rights and passing off concerning mobile apps. It also illustrates the importance of obtaining trademark registrations to enforce rights.
Facts
The plaintiff, which is a US company, operates in the UK through four mobile applications or apps, all branded with FreePrints-related names. The plaintiff initially launched an app in the United Kingdom in January 2014 which provided access to a dedicated mobile phone-based photo printing service. Customers must first acquire the app from one of the well-known app stores and download it onto their phone or tablet. Once downloaded, customers can place orders to have photos on their phone or tablet printed for free, paying only delivery charges. Customers are entitled to up to 45 prints for free per month. This entitlement is reset each month.
During the download, an icon appears on a customer’s screen, which is called the FreePrints Icon. This icon is shown below.
The plaintiff’s FreePrints business has been highly successful in the UK.
The plaintiff has taken extensive steps to use the term “FreePrints” as their brand name. The FreePrints Icon is consistently presented in turquoise and white. Their competitors use different colours.
The defendant had established a significant business largely operated based on a pay-per-photo model. As part of the business, they used an app, branded ‘Photobox’ (the “Photobox App”), but this was not used for providing the service directly competing with the FreePrints App. The Photobox App used a white and dark green icon (the “Photobox Icon”). That dark green colour was the primary corporate branding colour of the defendant and used on its Facebook and Instagram accounts.
In July of 2017, the defendant determined that it was falling behind in the app market. Growth in this market was being driven by new entrants with innovative offerings, such as Chatbooks and FreePrints.
Senior members of the defendant’s staff purchased the plaintiff’s services for some time. The defendant targeted the plaintiff’ business in the sense of hoping to emulate its success and the key features of its approach to marketing and the overall product offering to the consumer, except to do that better. It seems inconceivable that similarities in the respective products and branding occurred by chance.
The defendant launched an app that was branded Photobox Free Prints (“the Photobox Free Prints App”). This app provides a similar service to the plaintiff’s FreePrints App, Like the FreePrints App (and all apps), it has an associated icon which appears on a user’s screen once the app is installed. The Icon is set out below.
There were other instances where the defendant’s marketing material was very similar to the plaintiff’s material.
The plaintiffs sent an initial demand letter and in the absence of response initiated an action in the High Court of Justice. After a trial, a decision was issued.
Trademark Infringement
The plaintiff owned a registered UK trademark for the FreePrints Icon. In an action for infringement in both Canada and the UK it is not necessary for the plaintiff to prove any actual confusion to succeed. What matters is whether the court considers there is a likelihood of confusion.
The use of the descriptive words “Free” and “Prints” by both parties was an important issue at the trial. The judge said there was no hard rule that use of a descriptive term could not lead to a finding there was confusion, but such a case is harder to establish.
Regarding the lack of evidence of confusion, the Judge still concluded that for the purpose of trademark law, there was a sufficient likelihood of confusion. The very limited actual confusion occurred because of the way the Photobox Free Prints Icon was presented to the average consumer – namely after a selection process which resulted in the icon only appearing on a user’s screen once it has been selected. Actual confusion may be avoided, and confusion was limited to “post-sale” confusion.
On reviewing the evidence and the statutory factors the Judge concluded that the use of Photobox Free Prints Icon by defendant was infringing.
Passing Off
The plaintiff also concurrently sued for passing off. To succeed with such a claim a plaintiff must prove three things. First, the plaintiff must establish goodwill or reputation attached to the goods or services supplied in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which particular goods or services are offered to the public, so that the get-up is recognised by the public as distinctive of the plaintiff’s goods or services.
Second, the plaintiff must show a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are the goods or services of the plaintiff.
Third, the plaintiff must demonstrate that damage was suffered by reason of the erroneous belief engendered by the defendant’s misrepresentation.
Unlike an action for trademark infringement, in a passing off case, whether and the extent to which there is confusion, is often the critical factual issue.
The claim for passing off relating to the Photobox Free Prints Icon was dismissed largely based on the absence of evidence of confusion.
If you have questions, please contact me at mckeown@gsnh.com.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.