Data Marketing & Secretarial Ltd v S&S Enterprises Ltd, Intellectual Property Enterprise Court
The registered trade mark “JUMPSTAR” for batteries was not too similar to the word “jumpstart” to invalidate its registration, said the Intellectual Property Enterprise Court. The Court also rejected a claim that the trade mark was descriptive of the goods sold and lacked distinctiveness.
The facts of the case were as follows. Data Marketing registered a UK trade mark for the word “JUMPSTAR” in respect of batteries and associated goods. S&S Enterprises imported and marketed a battery charger using the “JUMPSTAR” name. Data Marketing claimed that this was an infringement of its trade mark and brought proceedings against S&S Enterprises.
S&S Enterprises’ defence was that the trade mark was invalidly registered. Firstly, it argued that the trade mark was descriptive due to its similarity to the word “jumpstart”. It also argued that the trade mark was not distinctive because other unrelated traders had previously used it. S&S Enterprises further claimed that the trade mark was registered in bad faith as Data Marketing should have known about the prior use of “JUMPSTAR” and sought consent from the traders to register the trade mark.
The Court said the test to apply was whether the average consumer on viewing Data Marketing’s battery charger bearing its trade mark would immediately, without further thought, misperceive it as “jumpstart”. Crucially, S&S Enterprises failed to put forward any convincing evidence to persuade the Court that there would be a misperception. The Court rejected S&S Enterprises’ claim that the mark lacked distinctiveness as again there was no adequate evidence that the average consumer was aware of “JUMPSTAR” being used in the UK when Data Marketing made its application. The Court further concluded that an applicant for a trade mark who knew the proposed mark was in use by other traders was not necessarily acting in bad faith where he believed he had the superior right to the mark. In this case, Data Marketing had a superior right to “JUMPSTAR”. The Court found that the trade mark had been validly registered and that S&S Enterprises had infringed it.
Serene Allen, a trainee solicitor at Matthew Arnold & Baldwin LLP, comments: “This ruling serves as a reminder of the importance of obtaining sufficient evidence when attempting to challenge the registration of a trade mark. The perception of the average consumer who may not give a trade mark a second thought when purchasing goods is key to showing that a trade mark is descriptive or lacks distinctiveness.”