Apps dominate trade and custom in all sorts of goods and services, across all types of industries and sectors. They are one of the essential routes by which a brand can establish and build its reputation and relationship with their consumers, both when the consumer searches for the product on the app store and when the app is downloaded and used. But which of these uses should be considered when assessing trade mark infringement in an app, and will the assessment differ depending on the use? The recent High Court judgment in PlanetArt v Photobox showed how nuanced trade mark use can be when considering an app, and how important it is to differentiate your app from competitors at each stage of the app's use.
PlanetArt is the company behind “FreePrints”, which has been offering consumers a photo printing service via their app, with a free monthly allowance, since 2014. Photobox launched their app for a similar service in 2019 under the name “Photobox Free Prints”. PlanetArt sued Photobox for passing off and trade mark infringement and sought to invalidate Photobox’s PHOTOBOX FREE PRINTS word mark on the grounds of passing off and bad faith.
Trade Mark Infringement
PlanetArt have a registered mark for their “Free Prints” logo, shown on the left in the below table, which was used in the proceedings and judgment. Photobox’s app icons and branding are shown on the right:
The judge, satisfied that PlanetArt’s mark had acquired enhanced distinctive character and reputation, carried out a detailed analysis of how each of Photobox’s marks were used and the context in which they were encountered on the consumer’s journey; starting when a consumer searches for an app and how the mark appears for the app on the app store (sign b), how it appears when downloaded on the consumer’s phone (sign a) and the branding within the app when a consumer uses it (sign c). He found that a (i.e. the logos on the consumer’s phone when the app has been downloaded) were infringing. In relation to the other uses (i.e. in the app store and the branding used within Photobox’s app), he held there was no likelihood of confusion nor detriment to PlanetArt. In that context, the inclusion of the word “Photobox” differentiated it from PlanetArt’s "FreePrints"; it was the dominant and distinctive part of their signs and the words “Free Prints” were merely descriptive.
In relation to passing off, the judge found PlanetArt did have goodwill in the visual parts of the app icon (the butterfly design and the colours) and in the word “FreePrints”. However, there had not been misrepresentation as when a consumer downloads the app, the word “Photobox” is used and provides “sufficient identification” that it is Photobox’s app.
PlanetArt’s invalidity claim against Photobox’s PHOTOBOX FREE PRINTS word mark, on the grounds of passing off and bad faith, did not succeed. Photobox provided evidence that they filed their application as part of a wider strategy relating to Apple’s guidance on app names, rather than in relation to PlanetArt’s competing app. In addition, the judge held the words FREE PRINTS in the mark as applied for were descriptive.
So who won? Nobody really; Photobox were ordered to change one of the main uses of their branding - on the icon used when the app has been downloaded to the consumer’s phone, but PlanetArt still have a competitor using words from its brand name. Unfortunately for PlanetArt, this is the risk when you use generic or descriptive words in your brand. Photobox didn’t get off without a sharp scolding from the judge though. Keeping on trend with everyone’s current favourite phrase, he described their use of “Free Prints”, along with the turquoise and white colour scheme, as, “an antisocial non-distancing of the Defendants’ identity from that of the Claimants”. They were well within the dreaded 2 metres.
Lessons: you can target and take inspiration from a competitor’s business, but you must differentiate yours. App names and logos require careful consideration, particularly in relation to different versions of a logo or name used across the app. These differences can be small, but have large consequences, as this case has shown. As a starting point, Apple and Google provide their own guidance on app names and logo designs, which brands should t-app into in their design process.
Each use of the signs must be examined separately in what might be described as its "local" context.