The Intellectual Property Enterprise Court (IPEC) has ruled in favour of FLOWERBX Limited in its trade mark infringement claim against Flowers Box London Limited for alleged infringement of the former’s ‘FLOWERBX’ trade mark (UK00003223726), in a decision that also included lengthy consideration as to whether the FLOWERBX mark upon should be declared invalid.
FLOWERBX Limited initial pleading alleged that Flowers Box London had used several signs in the course of business, including ‘FLOWERSBOX’, ‘FLOWER BOX’, and ‘FLOWERS BOX LONDON’, that infringed FLOWERBX’s registration. In turn, Flowers Box London counterclaimed by seeking to invalidate the ‘FLOWERBX’ mark on the basis the mark is descriptive of the goods and services for which it is registered, and thus lacked distinctive character.
The IPEC first heard submissions in respect of the invalidity proceedings, where the Court initially encountered difficulty in establishing the precise nature of the goods and services protected by the ‘FLOWERBX’ mark given the broadness of the mark’s specification. For instance, there was deliberation as to whether the mark described ‘a box of flowers’ or ‘a box for flowers’. The Court settled on considering the mark containing two words distinct from one another, ‘flower’ and ‘box’. Consequently, Flowers Box London struggled to identify which parts of the mark’s specification rendered the words ‘flower box’ as descriptive, and could not provide evidence suggesting that the relevant public would associate the words ‘flower box’ with floral arrangements in particular, but rather simply with the box itself, which does not feature in the mark’s specification. Lastly, Flowers Box London admitted to the mark enjoying enhanced distinctiveness, though argued that this was limited only to high-end and luxury target consumers. The Court disagreed with this notion and struck out Flowers Box London’s counterclaim.
With the counterclaim defeated, FLOWERBX Limited relied on the Court’s finding that the mark possessed a reputation, in conjunction with instances of actual confusion on the part of the average consumer, to succeed in its claim for trade mark infringement under section 10(3) of the Trade Marks Act 1994. This finding was also assisted by Flowers Box London’s use of FLOWERBX’s images on its own website, with the Court also confirming that Flowers Box London was aware of the confusion caused by its use of the signs from at least 2019.
Given the counterclaim failed in large part due to deficiencies in the Defendant’s pleadings and evidence, it serves as a reminder that when assessing the alleged descriptiveness of a mark, consideration must be given to the average consumer’s interpretation of the mark relative to the particular goods and services for which the mark is registered – which the Defendant had seemingly failed to sufficiently evidence here.
If you have any questions on the above, or if you need any advice or support in respect of your own intellectual property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
