Hayman-Joyce Property Limited v Hayman-Joyce Broadway LLP & Anor
[2023] EWHC 1028 (IPEC)
E-Accounting Solutions Limited & Anor v Global Infosys Limited & Anor
4 August 2023
[2023] EWHC 2038 (Ch)
High Court
Two companies that do similar work had a fight because one used the other's name in their online advertising. Even though it was a mistake, the court said the advertising was confusing and unfair, so the company that made the mistake has to pay the other company for the damage done.
Key Facts
- •E-Accounting Solutions Ltd (trading as AdvanceTrack) sued Global Infosys Ltd (trading as GI Outsourcing) for trademark infringement and passing off.
- •GI Outsourcing used 'advancetrack' as a keyword in its Google AdWords campaign, and the term also appeared in its online advertisements.
- •GI Outsourcing claimed this was an error by its marketing consultant, JE Consulting.
- •AdvanceTrack's trademark was registered in various classes, including Class 35 ('Accountancy Services').
- •The dispute centered on whether GI Outsourcing's use of 'advancetrack' was deliberate and whether it caused AdvanceTrack financial loss.
- •GI Outsourcing counterclaimed that AdvanceTrack's trademark was invalid due to descriptiveness and/or customary use, and should be partially revoked for non-use.
Legal Principles
Trademark infringement under sections 10(1), 10(2), and 10(3) of the Trade Marks Act 1994 (TMA).
Trade Marks Act 1994
Passing off.
Common Law
Trademark validity under sections 3 and 47 of the TMA.
Trade Marks Act 1994
Trademark revocation under section 46 of the TMA.
Trade Marks Act 1994
Interpretation of the TMA in light of the Trade Marks Recast Directive EU 2015/2436 and relevant case law.
EU Law (pre-Brexit)
Domestic statutory interpretation principles as per R(PRCBC) v SSHD [2023] AC 255 (SC).
R(PRCBC) v SSHD [2023] AC 255 (SC)
Google France v Louis Vuitton principles regarding keyword use in trademark infringement.
Google France v Louis Vuitton
Interflora v Marks & Spencer principles regarding keyword use and likelihood of confusion.
Interflora v Marks & Spencer
Principles of passing off as per Reckitt & Colman v Borden.
Reckitt & Colman v Borden
Damages for trademark infringement under the Intellectual Property (Enforcement) Regulations 2006.
Intellectual Property (Enforcement) Regulations 2006
Outcomes
Trademark infringement was found.
GI Outsourcing's use of 'advancetrack' as a keyword and in its Ad Text, even unintentionally, created a likelihood of confusion and adversely affected AdvanceTrack's trademark.
Passing off was found.
AdvanceTrack established goodwill and reputation, GI Outsourcing's actions caused misrepresentation leading to confusion, and AdvanceTrack suffered damage.
GI Outsourcing's counterclaim for trademark invalidity was dismissed.
AdvanceTrack's trademark was not deemed descriptive or customary in the trade.
Partial revocation of AdvanceTrack's trademark was ordered.
AdvanceTrack had not genuinely used its trademark in classes 42 and 45.