Who: Intellectual Property Office v Intellectual Property Agency Limited
Where: Intellectual Property Enterprise Court (IPEC)
When: 10 November 2015
Law stated as at: 4 December 2015
What happened:
The Intellectual Property Agency Limited (IPAL) is a company incorporated in the Seychelles and owned by a Mr Johansson who resides in Stockholm. Its website provides a London address and it was in the business of writing to proprietors of patents and trademarks reminding them that their right required a renewal and requested a fee for the renewal.
The IPAL reminder requested a minimum fee of £1,280 from rights holder to renew a trade mark, whilst the official fee charged by the UK Intellectual Property Office (IPO) was £200.
Their letters to rights owners looked official, with the word “Reminder” at the top and they used this logo together with their London address.
The IPO brought a trade mark infringement and passing off action against IPAL in the IPEC, where the damages that can be claimed are capped at £500,000.
The defendants ( the IPAL and Mr Johansson) did not appear and were not represented.
Passing off
The IPO relied on goodwill in the form of the statutory and non-statutory services it provides, its website which attracts 307,000 hits per month and its helpline which receives about 8600 enquiries each month.
The Judge accepted that IPAL’s requests for fees were made by means of an official-looking document suggesting that it emanated from an official source. The judge also accepted evidence of several instances of confusion He held that a large proportion of rights holders were likely to believe IPAL’s misrepresentation that it was the relevant government IP body and make the requested payment fees under the mistaken impression that it was the official fee.
On damage, the judge held that though the IPO did not suffer damage in the usual way, there was damage to the IPO’s reputation.
Based on this reasoning, the court concluded that all elements of passing off by IPAL were established.
Trade mark infringement
The IPO alleged that their device trade mark 2501853A registered in class 45 was infringed by IPAL pursuant to s 10(2) of the Trade Marks Act 1994.
This lays down that a registered trade mark (“RTM”) will be infringed where there is a likelihood that confusion will be caused by the defendant’s sign being the same as or similar to the RTM and the sign is used in relation to goods or services that are the same as or similar to those for which the RTM is registered.
In light of evidence of confusion that was produced to the court (also considered in the context of the passing off claim, where misrepresentation is a key element), the judge held this reinforced the likelihood of confusion in the mind of the average consumer and held that the IPO’s trade mark had indeed been infringed.
Why this matters:
The damages awarded to IPO were substantial.
On the evidence, IPAL received a total of £1,334,234 from rights holders of which it paid £227,724 to the IPO to renew its customers’ rights. This meant that they made a profit of £1,106,510.
The judge awarded the IPO £500,000 which is the maximum award the IPEC can make.
The case is a reminder that whilst proceedings in the IPEC have cost caps which make litigating there cheaper than the High Court, rights holders who, as here, have a strong case may lose out due to the maximum of £500,000 that can be awarded.
The benefit of hindsight is a wonderful thing, and the full extent of IPAL’s ill-gotten gains may not have been apparent to the IPO before it issued proceedings.
One has to ask, however, whether, given the strength of the IPO case, public funds would have been better spent on High Court action, where there is no limit on the damages that can be awarded and the taxpayer would have ultimately made a better return.
