The dispute between PlanetArt, a provider of mobile phone-based photo printing services offering free prints, and Photobox, more traditionally known for its pay-per-photo business model, has concluded with a finding that Photobox’s use of “Free Prints” as an app name infringed PlanetArt’s trade mark for “FreePrints”. Mr Alexander QC handed down the judgment remotely, in accordance with the Covid-19 protocol. The case will be of interest to all brand and app owners, and provides clarity on how trade mark infringement and passing off are considered in the context of mobile apps.
The English High Court ruled that PlanetArt’s "FreePrints" icon trade mark was infringed by the Photobox Free Prints App icon because of the visual and aural similarities between the two icons, taken as a whole. However, Photobox’s other uses of the sign did not infringe, and PlanetArt’s passing off claim was dismissed entirely, highlighting the difficulty in enforcing rights in a descriptive trade mark.
The judgment shows that where descriptive terms are used in trade marks, the courts are more likely to tolerate the use of similar descriptive terms by others, especially where another user attaches a distinctive term to the descriptive word(s) in the mark.
Facts
PlanetArt launched an app in January 2014, using the brand “FreePrints”, which allows customers to place orders to print photos from their devices for free, with customers paying only delivery charges (FreePrints App). PlanetArt has launched a series of further apps using the “FreePrints” brand (such as the FreePrints Photobooks). The FreePrints App has proved to be very popular and was viewed by over 9 million people in 2019.
In 2019, Photobox, which until then had relied on a pay-per-photo model, launched a similar app competing with the FreePrints App, that allowed customers to place orders with prints provided for free (Photobox Free Prints App).
PlanetArt brought an action against Photobox
- for trade mark infringement – PlanetArt alleged that Photobox infringed PlanetArt’s trade mark by using the expression “Free Prints” in (a) the Photobox Free Prints App icon and (b) other brands used in the Photobox Free Prints App (images below); and
- for passing off arising out of use of the PlanetArt trade marks.
PlanetArt also requested that Photobox’s UK trade mark PHOTOBOX FREE PRINTS be invalidated.
Trade mark infringement
App icons
Mr Alexander QC found that there were significant similarities in the visual presentation of the two app icons, and the way the two icons were pronounced (“FreePrints” vs “Free Prints”). Photobox claimed that the words “Free Prints” under its app icon image simply described the service the app provided, and was not a brand. However, following an analysis of similar apps available on the AppStore, Mr Alexander QC concluded that the average consumer would expect the term below the image to have trade mark significance. While the Photobox Free Prints App icon could be distinguished from the FreePrints App icon on close examination, they were more similar than different. The two-colour turquoise and white design in both icons were too similar, as were the words underneath the image in the icons. The similarities between the icons, taken as a whole (and not merely the word elements) were sufficient to give rise to a likelihood of confusion within the meaning of s. 10(2) of the Trade Mark Act 1994 (TMA 1994).
The court found that the “FreePrints” name had gained a reputation and secondary meaning as one word through consistent use and, for similar reasons as above, the court found that there was infringement under s. 10(3) TMA 1994.
Other app branding
PlanetArt’s claims relating to the other Photobox Free Prints App brands were dismissed. The inclusion of the origin denoting word “PHOTOBOX” in these marks meant consumers were more likely to perceive PHOTOBOX as the brand and the words “FREE PRINTS” as merely descriptive.
No passing off
PlanetArt had some goodwill in the mark “FreePrints” as a composite word, and the term “FreePrints” had acquired a secondary meaning to be connected with PlanetArt. However, that goodwill was not so strong that the mere use of the descriptive words “Free Prints”, as two words, in relation to a business or app supplying free prints, could be connected with PlanetArt’s business. The judge found that Photobox’s acts did not constitute misrepresentation either, partly because of its use of the PHOTOBOX brand to distinguish their business from PlanetArt’s business. This conclusion was clear in relation to the other app brands, but was marginal in relation to the Photobox Free Prints App icon and supported by the lack of concrete evidence that there was passing off.
No invalidation of Photobox’s UK trade mark
The court rejected PlanetArt’s application for invalidation of the PHOTOBOX FREE PRINTS mark for a number of reasons, including: (1) the mark contained the prominent distinctive character, PHOTOBOX; and (2) Photobox included FREE PRINTS in the mark as a descriptive term, which genuinely described the service that Photobox offered.
Read the full case: PlanetArt LLC v Photobox Limited [2020] EWHC 713 (Ch)
