Passing off – Get-up of goods – Confusion

Lumos Skincare Ltd v Sweet Squared Ltd and other companies: Court of Appeal, Civil Division: 6 June 2013

Since 2007, the claimant had sold skincare products using the word mark 'LUMOS'. Specifically, the products the claimant sold were specialist anti-ageing products. In 2010, the defendants launched nail care products under the same mark. The defendants' products were much cheaper than those of the claimant, and were aimed at a mass market. In one way or another, the products of both claimant and defendants reached both professional and retail customers.

In 2011, the defendants' products were advertised including the word LUMOS in magazines aimed at the beauty trade, and then at a trade fair. That prompted a trade customer of the claimant (M) to email the claimant asking how the products as advertised fitted in with the claimant's other products; the impression being that M thought the defendants' products were the claimant's. The claimant received emails from two further trade customers who, whilst understanding that the defendants' products were not those of the claimant, expressed concerns about the use of LUMOS by the defendants.

In reaction, the claimant issued proceedings alleging passing off and seeking an injunction. The judge held that the claimant had proved that it had established a goodwill for its business to which the mark related, and that, if the defendants had represented their products as being those of the claimant, or as being associated with the claimant in the way of business, then it would have been likely that the claimant would have suffered damage to its reputation.

However, the judge held that the defendants had not made such a misrepresentation on the grounds that, inter alia, the claimant's mark had only a modest reputation and goodwill, which was limited to high end anti-ageing products in the skincare industry, that that reputation and goodwill was limited to the claimant's small customer base, that there was a clear division between the skincare industry and the nail care industry, although they both formed part of the beauty industry generally, the claimant's case had depended upon establishing that a substantial number of members of the public would have been misled into purchasing the defendants' product in the belief that it was the claimant's product but the claimant had failed to show that there was a single person in the category, and that the high point of the evidence of confusion had been M's email, but the claimant had failed to call her as a witness.

The judge concluded that, as it was, the lack of any such evidence of confusion suggested that the claimant's customers might have known that the defendants were not connected with the claimant, and, therefore, he dismissed the claim. The claimant appealed.

The claimant submitted that there were members of the public who knew and liked its products and associated them with the LUMOS mark, that its products and those of the defendants were sold in similar and overlapping outlets, that, generally, skincare and nail care products were promoted in the same sort of media and their products were sufficiently close in market terms for the same brand name to be used, in some cases, for each. Accordingly, the claimant submitted, the questions for the judge had been, first, whether members of the public familiar with the claimant's products would likely come across the defendants' LUMOS nail care products, and, if they did, whether they would be likely to think that the LUMOS nail care products had come from the same source as the claimant's LUMOS skincare products. The appeal would be allowed (Sir Bernard Rix dissenting).

In the instant case, the end-users of the claimant's products were relevant as people who might have been affected by any representation made by the defendants. The judge had misdirected himself, when asking the question whether relevant persons would have been deceived by the defendants' use of the same mark, by treating only the claimant's trade customers as the relevant people. In concluding that no one would think that the defendants' nail care products were associated with the claimant's skincare products, despite the use of the same mark, he had wrongly ignored the evidence that in some well known instances the same brand name was used for both kinds of product.

He had also wrongly concluded that M's email did not show that she assumed that the defendants' LUMOS products had come from or were associated with the claimant, and that he could not have come to that conclusion without having seen M give oral evidence. Even apart from that, he had been wrong not to draw the inference, from the fact that a person in the trade could express herself in the way she had in the email, that an end-user familiar with the claimant's product who came across the defendants' LUMOS products might well have thought that they came from or were associated with the claimant.

Given the lack of side-by-side trading, the judge had been wrong to conclude that the claimant could not succeed without evidence from a witness who had been deceived. It had been sufficient for the claimant to show the likelihood of deception by inference. The evidence had justified the inference that a significant number of the claimant's actual and potential customers would be likely to be misled by the defendants' use of the LUMOS mark into thinking that the defendants' nail care products were products of or associated with the claimant.

The evidence of the claimant's sales justified the conclusion which the judge had come to that the claimant had some, albeit limited, goodwill with end-users, who would associate the claimant's products with the word LUMOS. There was no reason to suppose that the defendants' LUMOS nail care products might not be used and sold in the same salons as the claimant's skincare products. In the circumstances, if an end-user who knew the claimant's products were to see the defendants' LUMOS nail care products advertised, promoted, sold or used in a beauty salon, she would be likely to think that the nail care product came from the same source as the skincare product which she knew, or from an associated source. On that basis, the claimant had made out the necessary elements of the tort of passing-off (see [56], [64], [67], [68], [76], [77]-[96], [98] of the judgment). Accordingly, the judge ought to have granted the injunction sought by the claimant (see [97] of the judgment). Neutrogena Corpn v Golden Ltd [1996] RPC 473 considered. Decision of Recorder Douglas Campbell [2012] All ER (D) 265 (May) reversed.

Richard Hacon and Chris Hall (instructed by Bolt Burdon) for the claimant; Denise McFarland (instructed by Lupton Fawcett LLP) for the defendants.