Facts

Equisafety Ltd designs, manufactures and sells high visibility products to promote the safety of horses and their riders when on the road. In around February 2015, it started selling a high visibility jacket under the mark MERCURY and expanded its use of that mark to high visibility rugs for horses and dogs and high visibility leg boots for horses. It said that, as a result, it had acquired goodwill in the mark.

Battle, Hayward and Bower Ltd is involved in the manufacture and sale of, inter alia, equestrian products, selling predominantly to trade customers online.

In around 2018, Battle started selling mobile phone holders, gilets and jackets under the label “HyVIZ Silva Mercury Reflective” (the HVSMR label), represented as follows:

Battle also used the label “Silva Mercury” on some of its packaging.

On 6 June 2019, Equisafety emailed Battle demanding that it stop such use. On 7 June, it applied to register the word “mercury” as a UK trade mark and, on 25 October 2019, the mark was registered in Class 9 for “Protection devices…; Protective clothing; Reflective clothing…” etc., Class 18 for “All equine, Leg boots, exercise rugs, tail guards, neck bands, nose bands”, and Class 25 for “Clothing excluding footwear”.

Battle continued to sell equestrian products under the HVSMR label and expanded the range to include bridles, hat bands, leg bands and tail bands.

Equisafety issued proceedings on 30 October 2019 for passing off and, insofar as it had occurred after 7 June 2019, infringement of its MERCURY trade mark under ss 10(1), 10(2) and 10(3) of the Trade Marks Act 1994.

Battle denied infringement and counterclaimed for a declaration that the MERCURY mark was invalid under s 47(1) of the 1994 Act because it had been registered in breach of ss 3(1)(b), 3(1)(c), 3(1)(d) and/or 3(6) (i.e., that MERCURY was devoid of distinctiveness, was descriptive, had become customary and/or had been registered in bad faith).

Decision

Sections 3(1)(b) and (c) — distinctive and descriptive

Mr Nicholas Caddick QC, sitting as a Deputy High Court Judge, found that the evidence did not establish that MERCURY would be seen by the average consumer as being descriptive of reflective high visibility clothing, let alone as being descriptive of the wider class of goods for which the word was registered. The average consumer might be aware that mercury is a metallic substance and has the properties referred to in the dictionary definitions relied on by Battle, but that did not mean that the average consumer would easily recognise, let alone immediately and without further reflection regard, the use of the word MERCURY as descriptive of any characteristic of the relevant goods.

Further, the evidence showed that the word MERCURY was used by Equisafety and customers to identify the range, rather than as a description of the appearance of the silver fabric. In other words, the word MERCURY was being used as a brand, i.e., in the trade mark sense.

Section 3(1)(d) – customary

Mr Caddick QC found that the evidence did not come anywhere close to showing that the word had become customary. If it had become customary, there would be other high-vis products on the market being sold under the word “mercury”, which there was not. The evidence showed that such other products were sold under other brand names.

Section 3(6) — bad faith

Mr Caddick QC found that the mere fact that Equisafety had made the trade mark application after finding out that Battle was selling goods under the HVSMR label did not, of itself, show bad faith. Further, Battle’s argument that it had become bad faith because the mark was descriptive failed in view of the above findings. Similarly, the argument that Equisafety had acted in bad faith because it had not acquired any unregistered rights in the mark also failed in view of the finding (see below) that Equisafety had goodwill in in the MERCURY mark.

Equisafety admitted that the registration under Class 9 included some goods (e.g., “helmets for bicycles” and “Fences (Electrified)”, in respect of which there was no intention to use the mark. However, it was clear from the evidence, that the registration also included goods under Class 9 and Class 18 for which Equisafety was using the mark, as well as classes of goods that it might want to move into. This did not support a bad faith claim, particularly in the case of a registration that was made less than five years previously (Sky plc v SkyKick UK Ltd [2018] EWHC 155). In any event, bicycle helmets and electric fences were outside the scope of Battle’s activities. Therefore, Equisafety’s motivation could not be said to have been intended to undermine Battle’s position.

Section 10(1)

Mr Caddick QC said that the sign used by Battle in relation to the relevant goods was clearly either “HyVIZ Silva Mercury Reflective” or “Silva Mercury”. These were not identical to MERCURY. It was possible that the average consumer might disregard the “HyVIZ” and “Reflective” elements but even that left one with the composite sign “Silva Mercury”, which was also not identical to MERCURY.

Section 10(2)

In terms of similarity between the MERCURY mark and Battle’s HVSMR sign, Mr Caddick QC found that the average consumer would see Battle’s sign as being moderately similar to MERCURY. There were obvious visual and aural similarities between the signs given that the word “Mercury” was not an insignificant part of Battle’s sign. There was less conceptual similarity, however, as Battle’s sign overall conveyed the concept of a high visibility, silver coloured, reflective product, whereas MERCURY conceptually did not point to a high visibility, reflective product, but rather to a product with unusual (mercurial), god-like or even celestial but unspecified qualities.

As for similarity of goods, Mr Caddick QC agreed with Equisafety that Battle’s phone holder was at least moderately similar to the registered “Protective caps for cameras”. The registration for goods in class 9, taken as a whole, was clearly intended to cover goods that provide protection against injury or accident, including, as the reference to protective caps for cameras showed, injury or accident to a camera. In Mr Caddick QC’s view, a reflective case for a mobile phone was a similar product.

Mr Caddick QC also found bearing in mind that for the purposes of s.10(2), the likelihood of confusion is assessed in the context of the actual use that has been made of the sign complained of, that there was a likelihood of confusion in that an end user was likely to assume that there was some association between Equisafety and Battle’s products as marketed and sold under the HVSMR or Silva Mercury labels.

This was because Battle’s sign was being used in relation to identical or similar goods, and because of the clear visual and aural similarities between the sign and the mark. Mr Caddick QC also said that, given the essentially descriptive nature of the words “Hy VIZ”, “Silva” and “Reflective” in the HVSMR sign, the average consumer would take most notice of the word “Mercury” and would regard it as being of some trade mark significance.

Section 10(3)

Given that the factors relevant in determining whether a mark has a reputation are effectively the same as those for assessing whether it has acquired a distinctive character, Mr Caddick QC found that the MERCURY mark had acquired a reputation for the purposes of s 10(3).

Further, the HVSMR sign was at least similar to the mark, and Mr Caddick QC’s findings on the likelihood of confusion meant also that the use of Battle’s HVSMR sign would give rise to the requisite link being made with the MERCURY mark under s 10(3).

As for injury to distinctive character, Mr Caddick QC said that the factors that had led him to conclude that there was a likelihood of confusion also led him to conclude that that there was the requisite detriment. Accordingly, Battle’s use of the word “Mercury” in relation to high visibility equestrian products was bound to diminish the ability of Equisafety’s MERCURY mark to act as a designation of origin of its products.

However, Mr Caddick QC rejected Equisafety’s claim that the reputation of its MERCURY mark had suffered or might suffer, as there was no evidence to show that Battle’s products were of inferior quality.

As for unfair advantage, Mr Caddick QC said that it followed from his conclusions on the distinctive character of the MERCURY mark and the likelihood of confusion that Battle’s sign, by including the word “Mercury”, did take unfair advantage of the MERCURY mark. In effect, in using that word for its high visibility equestrian products, it was benefitting from Equisafety’s investment in the mark.

Further, in relation to Battle’s intentions, there was no evidence from Battle as to why it had decided to call its range “Mercury”. Therefore, Mr Caddick QC said, the court was entitled to draw an inference adverse to Battle that whoever was involved in the launch of Battle’s HVSMR range must have been aware of Equisafety’s use of the MERCURY mark. Even if that were not so, Battle was clearly aware of that use after it received Equisafety’s email and yet it went on to extend its range of products marketed under the HVSMR label.

As for undue cause, Battle denied acting without due cause because the word “mercury” was essentially descriptive. Given that Mr Caddick QC had found that MERCURY was not descriptive, this argument failed.

Section 11(2)(b)

Mr Caddick QC rejected Battle’s defence under s 11(2)(b) because he had already found that MERCURY was distinctive and was not being used descriptively. Further, given his conclusions on the issues of unfair advantage and due cause, Mr Caddick QC found that its use was not in accordance with honest practices in industrial or commercial matters.

Passing off

Mr Caddick QC found that Equisafety had clearly acquired goodwill in the word “Mercury” in relation to high visibility equine products and that it had done so before Battle had started using the word for its own products. That use by Battle clearly involved a misrepresentation that its products were derived from or connected with Equisafety, which had inevitably resulted in damage to Equisafety.

Conclusion

Mr Caddick QC concluded that Battle had not infringed Equisafety’s mark under s 10(1) but had done so under both s 10(2) and s 10(3). Battle was also responsible for passing off both before and after the MERCURY mark had been registered. (Equisafety Ltd v Battle, Hayward and Bower Ltd [2022] EWHC 3296 (IPEC) (8 December 2021) — to read the judgment in full, click here).