Legal Updates

Intellectual Property –Trade Mark – Passing Off – Misrepresentation - Goodwill

 

In the recent case of Lumos Skincare Ltd v. Sweet Squared Ltd and others [2012] EWPCC 22, it was held that the claimant in this case (“L”) failed to show that the defendants’ actions would cause the relevant consumers to be deceived, as is a required element in a claim for passing off.

 

Background

 

• L was a distributor of high-end skincare products and did so under the mark LUMOS;
• S consists of two UK entities and a US company. The UK entities sold nail care products under the mark LUMOS, whilst the US company manufactured the said nail care products;
• L brought proceedings against S alleging passing off;
• S contended that:

o   L’s goodwill was very small;

o   Their trade in nail care products was different from L’s trade in skincare products, thus there would be no misrepresentation;

o   L sold to consumers whereas S sold to professionals, thus there would be no misrepresentation;

o   The mark S actually used was FN LUMOS.

 

Outcome

 

The Patents County Court decided in favour of S and held as follows:

 

• L had used its mark LUMOS only to a modest extent and the figures were small in comparison to the whole skincare industry. Thus the goodwill generated by L was only small;
• L did not establish that there had been misrepresentation;

o   Due to the fact that L’s mark had very small goodwill and this was limited to a small customer base, the number of people to whom S’s activities would amount to misrepresentation was very limited;

o   There was a distinct difference between the skincare industry and nail care industry.

• L’s case was dependent on illustrating that a significant portion of the public would be misled into buying S’s products believing that they were L’s products.

 

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© RT COOPERS, 2012. 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.