7 September 2023
Maxwell Keay represented the Claimant “Prysmian” as sole counsel in a trade mark infringement and passing off claim against the Defendants for use of a logo containing “BICC Components” (the “Logo”) in relation to cable accessories, and a claim for a declaration of invalidity of the Second Defendant’s trade mark for the Logo. Prysmian relied on its registered trade mark for BICON for infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994 (the “1994 Act”) and goodwill associated with the BICC name.
Recorder Amanda Michaels held that the goodwill in the BICC mark was never transferred to Prysmian, and even if it was transferred, it was abandoned or otherwise extinguished over a 16 to 17 year period of non-use by the Claimant. However, had there been goodwill, the judge held that there had been misrepresentation which would cause damage.
The judge held that the Logo was dissimilar to BICON and in any case there was no likelihood of relevant confusion under section 10(2). Under section 10(3), while the judge found reputation she held that no link would be made between the marks.
Given the findings on infringement, the judge held that the Second Defendant’s registration for the Logo was not invalid. Further, the application had not been made in bad faith, contrary to sub-section 3(6) of the 1994 Act.