Pliteq Inc & Anor v iKoustic Ltd & Anor [2020] EWHC 2564 (IPEC)
This was a claim for trade mark infringement and passing off. For a number of years the claimants supplied their GENIEMAT and GENIECLIP acoustic damping and sound control products to the defendants for sale to the defendants’ customers in the UK. The relationship between the claimants and the defendants broke down and the defendants started selling their own alternative “MuteMat” and “MuteClip” products to their customers.
The claimants complained that the defendants were using the claimants’ GENIEMAT and GENIECLIP trade marks in various ways to sell the defendants’ alternative products, including in sponsored adverts on Google, on the defendants’ website and in use directly to customers, and that the same amounted to trade mark infringement and passing off. The claimants accepted that the defendants’ customers were not confused about the origin of the defendants’ goods, but maintained that the defendants’ use of the claimants’ trade marks amounted to “bait and switch” selling.
The court held that, with one exception, the defendants’ use of the claimants’ marks was in relation to the claimants’ goods that it still had in stock and therefore the claim for trade mark infringement failed. The exception was one page on the defendants’ website which represented that the claimants’ product was out of stock and offered the defendants’ product as an alternative. This use of the claimants’ mark was not in relation to the claimants’ goods and was held to be an infringement because it damaged the investment function. The claim for passing off was rejected.
Michael Silverleaf QC appeared for the claimants and Chris Aikens (as sole counsel) for the defendants.