In RxWorks Limited v Dr Paul Hunter, the High Court has considered the four-part test for trade mark infringement laid down last year by the European Court of Justice in Céline Sàrl v Céline SA, on which we reported in our previous bulletin.
The defendant owned the UK trade mark VET.LOCAL, which was registered for computer software, hardware and firmware. The claimant developed and sold a computer system whereby the term “vet.local” appeared on computer screens, for example in searches or when opening computer files. The defendant threatened to sue the claimant for trade mark infringement over its use of the term vet.local; but the claimant then proceeded to sue the defendant for making unjustified threats of trade mark infringement, and sought summary judgment on the issues raised.
The question at issue was whether the unauthorised use of the trade mark in the computer system constituted infringement pursuant to the UK Trade Marks Act. Although it considered it arguable that there was “trade mark use” under the Act, the High Court ruled that was there was no infringement, and concluded that the defendant had no real prospect of success in an infringement claim. The judge afforded greatest weight to the fact that the use would not be seen by consumers as indicating the commercial origin of the computer system. As a result, the use would not affect the primary function of the trade mark. This decision confirms the requisite conditions for infringement, and provides useful guidance for litigants on the application of these conditions.