Legal Updates – IP – Passing Off

Intellectual Property – Trade Mark – Passing Off – Cosmetics Products - Lumos Skincare Ltd v Sweet Squared Ltd

In the recent case of Lumos Skincare Limited v Sweet Squared Limited [2013] EWCA Civ 590, the Court of Appeal held that the evidence in this case justified an inference that a significant number of Lumos Skincare Limited (“L”) L’s customers would be likely to have been misled by Sweet Squared Limited (“SSL”) SSL’s use of the LUMOS mark owned by L. In particular, that L’s customers would have been misled into thinking that SSL’s nail care products were associated with L.

Background

• L distributed skin care products using the mark LUMOS, specifically high-end anti-ageing serums.
• SSL also sold nail care products under the mark LUMOS.
• L brought an action for passing off against SSL.
• In favour of SSL, in the first instance the judge ruled on whether the elements of passing off were met as follows:
  • There had only been a modest use of the mark LUMOS by L. As a result, only modest goodwill had been generated in the LUMOS mark in relation to skincare products, which related to a particular niche market;
  • There was no misrepresentation. Due to the above, the reputation and goodwill in L’s mark were limited to a small customer base. L did not show that members of the public would be misled into purchasing SSL’s products in the belief that originated from L.
• L’s claim for passing off by SSL was therefore dismissed.

Appeal

• L appealed to the court of appeal against the judge’s decision to dismiss its claim for passing off.
• The court of appeal held that:
  • The judge at first instance had wrongly commented that, if there had been deception, then L would have heard of it. Further, the judge had wrongly regarded L’s trade customers as the only relevant people who could have been deceived by SSL’s use of the same mark.
  • By way of evidence, an email that had been sent to L by a salon operator enquiring whether the LUMOS nail product range was a different branch of the company, had been misinterpreted by the judge in the Patents County Court. The email did in fact illustrate that the salon operator thought that SSL’s LUMOS nail products were associated with L. Due to the fact that someone in a better position than an end user (i.e. a salon operator) could see that the correct position and was misled, this meant that end users could also have been misled.
  • The judge failed to have regard for the fact that SSL’s nail care products were used, promoted and sold in the same salons as L’s skin care products, which is something that mattered from the viewpoint of L’s customers.
  • The judge should have found that L had made out its case for passing off.
• In light of the evidence available and due to the fact that the judge at first instance misdirected himself as to the relevant market, the significance of the email and the identity of L’s actual and potential customers, the judge deemed it appropriate in this case for the court to reach its own conclusion as to the correct inference. In the judge’s view, the evidence justified the inference that a significant number of L’s actual and potential customers were likely to have been misled by SSL’s use of the LUMOS mark. Such customers were likely to believe that  SSL’s nail care products were products of or associated with L.
• The appeal was allowed and an injunction granted to stop the use of the nail products by SSL.

For any queries on copyright law or other IP law issues, you may contact us by email [email protected]. Visit http://www.rtcoopers.com/practice_intellectualproperty.php Please see our article on How to Defend Allegations of Passing Off.

© RT COOPERS, 2013. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.