The Department of Belatedly Blogged Interesting Niceties (DOBBIN) has finally got round to writing up Data Marketing and & Secretarial Ltd and Winning Deals Ltd v S & S Enterprises Ltd and Selective Marketplace Ltd [2014] EWHC 1499 (IPEC), a ruling of the Intellectual Property Enterprise Court (Judge Hacon) for England and Wales way back on 16 May 2014, when this Kat's head was still full of the INTA Meeting in Hong Kong.

DMS was the registered proprietor of a UK word mark, JUMPSTAR, for a range of battery adaptors, chargers and parts for them, WD being its exclusive licensee (both companies were managed and largely owned by one John Sless). They made and sold JUMPSTAR vehicle battery chargers under the JUMPSTAR trade mark. The first defendant company, SSEL, an importer and wholesaler, imported JUMPSTART battery chargers from Hong Kong and marketed them under that name (they were also sold bySML, which was one of SSEL's customers. This is surely trade mark infringement, shouted DMS andWD, who promptly commenced proceedings.

Yes, said the two defendants, it does rather look like trade mark infringement -- but surely the mark wasn't validly registered.  The defendants admitted that they had infringed the mark, subject to the defence that it had been invalidly registered. After all, under Article 3(1)(c) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks, you can't register a mark that consists exclusively of signs or indications which might serve in trade to designate a characteristic of the goods in respect of which it was registered. Now, wouldn't the average consumer, seeing the mark JUMPSTAR in relation to a battery charger, jump straight to the conclusion that it was actually "jumpstart", or something similar. Even if this were not the case, wasn't JUMPSTAR devoid of distinctive character under Article 3(1)(b) of the same Directive? In any event, the application must surely have been made in bad faith under Article 3(2)(d), since DMS must certainly have known or ought to have known of the prior use by Media Brands -- an unconnected third party -- of the same name or mark in connection with similar or identical goods?

Judge Hacon allowed the claim.

* First, he said, you have to hypothesise the average consumer considering a battery charger bearing the sign JUMPSTAR, giving it the degree of attention appropriate to such goods. Next you have to assess whether there would be an immediate misperception of the mark, taking it to be "jumpstart", without further thought.  This conjecture would itself turn on the evidence.

* None of the evidence, taken individually or together, came close to establishing that an average consumer [this being, presumably, the average consumer of battery chargers, whoever that might be], when encountering the mark JUMPSTAR in association with a battery charger, would immediately perceive it to be "jumpstart".

* To the extent that the average consumer had been aware that the JUMPSTAR brand of battery chargers came from the claimants and other parties, it was possible that the message conveyed by the mark was that the products all came from a single source outside the UK. The allegation of invalidity under Article 3(1)(b) of the Directive therefore failed.

* An applicant for a trade mark did not act in bad faith solely because he knew that other parties were using the mark in relation to the same goods or services. After all, he might believe that his was the superior right to the mark. On the evidence, it was possible that Media Brands had been the gatekeeper for the supply of JUMPSTAR products in the UK. Whether this was so or not, Sless had believed it to be the case, and had believed that he had been applying for the trade mark JUMPSTAR in the UK with the blessing of the gatekeeper and authorisation of the source of JUMPSTAR goods. That had been a reasonable belief in the circumstances.

Says the IPKat, pleading a prior right that is owned by a third party who is not a party to the proceedings and who has not actively lent support to the defendant's claim is a line of argument that seems to have little chance of success under normal conditions.  Adds Merpel, these battery chargers are all very well, but the cheapest and most efficacious way of getting your car battery charged up is to look helpless and bat your eyes at someone who kindly does it for you ...

How to charge a battery here, here and here
How to charge a client here