A recent case demonstrates the implications of not thoroughly determining whether or not your new trade mark may be infringing somebody else’s mark or ‘passing off’ as if you were them. This can have huge commercial implications for your business. Protect your mark, but at the same time get legal advice before using a mark – it can be costly if you don’t!
The suspension of an Injunction to allow for adaptations
The Case
Lumos Skincare Ltd v Sweet Squared Ltd and others [2013] EWCA Civ 671.
Recently, the defendants were found liable for ‘passing off’. A ‘passing off’ action is a common law claim and often difficult to prove. Initially the claimants lost the action in the Patent County Court, but it was reversed on appeal.
An injunction was imposed upon the defendants to stop the use of the trade mark ‘Lumos’ on the defendants’ nail care products. The defendants requested that the injunction be suspended in order to give them enough time to re-brand and re-print their marketing material.
The Court of Appeal decided that it would allow the suspension of the injunction and no breach would be found on anything done by the defendants on or before the 31st July 2013. They thought this would allow the defendants enough time to re-brand. The Court of Appeal also went on to say that the defendants were not required to recall stock purchased by third parties with the mark on.
The Take Away
- Courts are willing, from this case at least, to ensure that commerciality and practicality are considered when an injunction is made.
- Time is of the essence, however. The decision was handed down around mid June. The suspension order barely gives the defendant much time to re-brand and change its any other materials.
- The defendants asked for an injunction suspension for good reason. Injunctions can have serious repercussions because breaching one can result in imprisonment or a fine.
- It is important to seek legal advice before committing to a trade mark. By infringing one or passing off as someone else can cause you considerably cost both to the claimant and both in respect of rebranding.
- Getting branding wrong can cost you hugely in the market place. Launching a product or service and then finding out you are infringing or passing off may mean lost money in advertising and an abrupt halt on your business.
- Simply because you have registered your trade mark will not be a defence to a claim that you are ‘passing off’ or infringing.
- It is of utmost importance to thoroughly consider the mark you want to use and how you want to use it.