Burges Salmon LLP - UK
Planetart LLC v Photobox Ltd ((2020) WLR(D) 266, (2020) EWHC 713 (Ch)) provides helpful guidance for businesses that are looking to launch apps into the UK market and wish to avoid potential branding clashes with competing apps. The key practical takeaways are as follows:
- Brands should ideally avoid using wholly descriptive terms as the name for an app; but if descriptive terms are used, always use such terms in conjunction with a primary brand name.
- Bear in mind that the words that are used underneath an app icon are likely to be understood by consumers to be the brand name for the app.
- It is important to consider all elements of branding, including words, images, the position of each, and the colours used.
- There is a large choice of designs and colourways for app icons. So be careful to avoid using design elements and names that are too similar to competitor apps; otherwise, you could be faced with a claim. Ensure that your app icon design is easy to distinguish from competitors offering the same or a similar service.
PlanetArt operates FreePrints, a mobile app-based photo-printing service. The app entitles users to have a certain number of photos printed free of charge per month, subject to delivery charges. The FreePrints app launched in 2014 with the below icon and has been extremely successful, seeing in excess of 11 million downloads in the United Kingdom and holding a consistently high ranking in both the Apple and Google App Stores.
Figure 1. PlanetArt’s app icon
Photobox also provides a photo-printing service, although historically operating on a pay-per-pic business model. In April 2019 it launched a rival app offering a similar service to PlanetArt – namely, offering free printed photos under the name ‘Photobox Free Prints’.
PlanetArt registered its app icon as a UK trademark and subsequently brought proceedings against Photobox for infringement, claiming that Photobox’s use of ‘Free Prints’ was designed specifically to target and compete directly with its app, and that Photobox had intentionally adopted confusingly similar branding in order to trade off PlanetArt’s reputation, thereby diluting its brand.
The infringement claim relied on Sections 10(2) (likelihood of confusion) and 10(3) (unfair advantage and detriment to distinctive character) of the Trademarks Act 1994. PlanetArt also claimed that the signs used by Photobox amounted to passing off.
PlanetArt objected to Photobox’s use of the below app icon, which included the non-composite wording ‘Free Prints’. This icon was found to infringe PlanetArt’s rights, as explained below.
Figure 2. Photobox's app icon
In addition to Photobox’s app icon, PlanetArt also objected to the presentation of Photobox’s app on the App Store and its use in other branding (below). However, these additional signs were found not to infringe PlanetArt’s trademark rights on the basis that the word ‘Photobox’ was prominently positioned in a manner that consumers are accustomed to finding in branding, and the words ‘Free Prints’ were used, in this context, in a descriptive manner, and not operating as a trademark.
Figure 3. Photobox’s app on the App Store and branding use
The following assessment therefore focuses on the parties’ respective app icons.
Likelihood of confusion
The goods and services offered by Photobox – namely, app-based photo-printing – were identical to PlanetArt’s registered rights for downloadable and mobile app software in Class 9 and photographic printing services in Class 40, and the verbal elements of the respective parties’ trademarks and signs FREEPRINTS and FREE PRINTS were substantially similar. Further, the judge found that PlanetArt’s use of the term ‘FreePrints’ as a single word had caused the term to have brand significance for consumers and therefore had acquired a degree of distinctiveness, even though it was a descriptive term. Visually, the logo elements present in the respective apps were not considered significantly different to dispel confusion, particularly as Photobox’s icon logo was found to be more similar to PlanetArt’s icon than other third-party app icons.
Photobox’s use of the words ‘Free Prints’ on its app icon without the Photobox brand name was particularly crucial to the judge’s findings. In the context of photo-printing apps, common practice and App Store guidance requiring the inclusion of the app name below the app icon meant that invariably words appearing below an app icon would be more likely to be understood by consumers to signify a brand, rather than describe the service, and this was the case both in the App Store and once the marks appeared on consumers’ home screens following the download of the app.
Having regard to the reputation attached to PlanetArt’s mark, the identity between the goods and services, and the similarity between the marks as a whole (not just the word elements), as well as the context of use of Photobox’s sign, the judge found that there was a likelihood of confusion under Section 10(2).
Unfair advantage and detriment to distinctive character
In light of PlanetArt’s widespread use, the judge found that PlanetArt’s trademark had acquired the necessary reputation, and that consumers would establish a link between the respective mark and sign.
The judge considered that the use of Photobox’s app icon on users’ screens would diminish the ability of PlanetArt’s mark to act as a reliable indication of origin and that Photobox’s icon had profited from the reputation and goodwill of PlanetArt's registered mark, regardless of Photobox’s intention. However, the judge was at pains to stress that this was marginal and not solely due to Photobox’s use of ‘Free Prints’, but the combination of common features including the use of a similar colour scheme and white lined logo.
Moreover, the judge found that there was no justification for Photobox to have used the words ‘Free Prints’ under the app icon – a position where ordinarily a brand name would appear – in combination with other stylisations that bore marked similarities to PlanetArt’s app icon, when Photobox had a wide variety of design elements that it could have chosen. This resulted in a finding that Photobox was acting without due cause and that its app icon infringed PlanetArt’s trademark under Section 10(3).
The judge was persuaded that PlanetArt had acquired goodwill in respect of its FreePrints brand and that the sign had acquired a secondary meaning, due to the use of ‘FreePrints’ as a conjoined single word which was not, in itself, a normal English word. However, there was no confusion at the time that Photobox’s app was downloaded due to the inclusion of the element PHOTOBOX when viewed in the mobile app platform. Accordingly, there was no operative confusion or misrepresentation on the facts and the passing-off claim failed. In this instance, the context of Photobox’s use went in its favour.
Photobox’s choice to use the words ‘Free Prints’ beneath its icon rather than wording to indicate that the app originated from Photobox appears to have been decisive in the judge’s finding of infringement. While the judgment confirmed that targeting and appropriating key features of a competitor's business is not strictly unlawful, the judge commented that Photobox’s choice of branding constituted "anti-social non-distancing" of PlanetArt’s brand and suggested that the final costs award in favour of PlanetArt would reflect this.
The judge stressed in his concluding remarks on the future conduct of the claim that PlanetArt cannot and should not seek to prevent third parties from genuinely descriptive use of the term ‘FREE PRINTS’ and must give other traders, including Photobox, broad latitude in how that is communicated. Interestingly, the judge also suggested how Photobox could amend its branding to comply with the judgment and indicated that he would be prepared to suspend the proceedings for a short period after judgment to enable the parties (assisted by a mediator, if appropriate) to resolve the matter once and for all.
The judgment highlights the limits and challenges of enforcing inherently descriptive terms, but also serves as a reminder that registered trademark infringement remains an efficient tool for owners to enforce their rights and that even descriptive marks can be enforceable if they have acquired distinctiveness – particularly if other similar branding elements are present.
Finally, although an absence of actual confusion is not fatal in trademark infringement cases, it plays a much more important role in passing off. Further, where there is no evidence of actual consumer confusion, a claimant will be expected to explain why this is – particularly in a case where there has been side-by-side trading of the parties’ competing marks for a sustained period, as was the case here.