In one of the first decisions handed down remotely, the Court has provided important guidance on trade mark infringement and passing off in the context of the competitive market of mobile apps. The dispute concerns PlanetArt's FreePrints app trade mark, which the court found was infringed by Photobox's app icon.
The case demonstrates that small differences in appearance between an app icon and a competitor's may be insufficient to prevent infringement. The court will take into account the "impact as a whole" of the elements of the app icon design to judge whether an infringement has occurred.
However, it also demonstrates the challenges of enforcing a descriptive trade mark, with the wider claim for infringement arising from the Defendant's use of "Free Prints", and the claim for passing off, both failing. Where trade marks are inherently descriptive, it will be difficult to prevent others using the mark to genuinely describe their services on offer. This will especially be the case where the alleged infringement contains an additional element to make it distinctive – in this case "Photobox Free Prints".
FreePrints is a mobile app offering users free photo prints, charging only for delivery. The app has proved hugely popular since its launch in 2014, with over 9.4 million downloads, generating £33 million in revenue. The Court found that the Claimant had taken extensive steps to present and project 'FreePrints' as its brand through its marketing materials and its use of its icon.
In April 2019, Photobox launched its own mobile app offering free prints under the name "Photobox free prints". This was a new service by Photobox; it had previously used a pay-per-print business model. The evidence showed that Photobox was targeting users of FreePrints, choosing a similar colour scheme for the presentation of its new service.
The Claimant's mark is an app icon in the shape of a rounded square, featuring a butterfly in white outline on a turquoise background. Photobox's app icon, which appears after installation of the app, also used a turquoise background and a white outline of a Polaroid photo. Photobox added the words "Free Prints" underneath the app icon to describe the service. A comparison of the marks is found at paragraph 147 of the judgment.
PlanetArt brought a claim for trade mark infringement and passing off against Photobox on the basis of the similarities between the branding of the icons and use of the name "Free Prints" in the app.
The Judge found Photobox's app icon infringed PlanetArt's trade mark on the grounds that there was a likelihood of confusion, and that it caused detriment to the distinctive character of the trade mark/took unfair advantage of it. The approach to likelihood of confusion was a holistic one to finding similarities between the marks, with the Court noting it was particularly important in this case to compare the respective marks as a whole, rather than seizing upon similarities and differences in individual features.
In reaching its conclusion, the Court considered a number of relevant factors relating to apps and how they are perceived by the average consumer. In particular, the average consumer was likely to expect the term below the logo on the app to have trade mark significance, or at least that it hinted such significance. The Apple App Store Guidelines reinforced this: they said that the app name should appear below the app icon.
Also relevant was the way the Photobox app appeared in context on a user's device after installation. App icons, depending on a user's screen size, will be small. The Judge noted there was an expectation that an app designer will take reasonable steps to ensure that its icon design is sufficiently different from that of others, especially to those offering similar services.
The frequency a user accesses an app adds to the visual significance of the app icon, as users will have to locate it by searching their mobile screens, rather than through muscle memory. In the case of an app offering photo prints, users will be accessing the service infrequently. An app's visual significance was therefore more important in distinguishing it from other services.
The Court noted the lack of compelling evidence of any actual confusion affecting customers choosing between the FreePrints app and Photobox Free Prints, despite multiple months of side by side trading and media chatter about the apps, which meant there had been ample opportunity for people to comment. However, this did not destroy the claim for trade mark infringement in the case of the app icon. Whilst actual confusion could be obviated or amounted only to post-sale confusion, there was no requirement of actual confusion for a claim for infringement based on a likelihood of confusion.
Photobox Free Prints App Store search App name and branding, and Stylised Photobox Free Prints
The Court however rejected the wider claim to trade mark infringement based on Photobox's use of FREE PRINTS in its app name and branding. Significantly, this usage prominently contained the word PHOTOBOX in a position/manner where consumers would expect a brand. The ordinary perception of consumers would be that 'FREE PRINTS' was signalling, descriptively, that 'free prints' were on offer. Again, the evidence re app store entries was important – they commonly involve combining parts which are trade marks and parts which are descriptive.
The Court also rejected the claim to passing off, including in relation to the Defendant's app icon. Whilst the Claimant had some goodwill in "FreePrints" as a single word which had acquired a secondary meaning, this was not so strong that mere use of 'Free Prints' by another business would denote the Claimant's business or suggest at a connection.
As such, it could not monopolise use of "Free Prints" as separate words. Indeed, the Judge went further, directing PlanetArt that it should not be able to prevent others from describing what they are offering, and doing so prominently – even in stylized script.
Given the Defendant's use of 'Free Prints' and its own brand PHOTOBOX, and the broader context of use, there was no misrepresentation giving rise to customer deception. Whilst it had not helped the Defendants in relation to the trade mark infringement claim on the app icon, the lack of confusion evidence was a significant factor in the Court rejecting the passing off claim.
Invalidation of Photobox's Marks
Following its decision on passing off, the Court rejected an application to invalidate Photobox's own mark PHOTOBOX FREE PRINTS, and also on the grounds that the application was made in bad faith.
PlanetArt will likely question the value of its successful claim on the ground of trade mark infringement in relation to just the app icon. Both parties' services in the app store still appear when searching for the term "Free Prints", and the Court has concluded that broad latitude should be given to other traders wishing to offer a free prints service.
Photobox has now changed its app logo background to pink. In a nod to lockdown rules, the judge did criticise Photobox for its "antisocial non-distancing" of its brand identity from the Claimant's service. Although non-actionable, he strongly recommended Photobox continue to make changes to its lawful uses of the Photobox Free Prints sign to move away from its competitor's branding, suggesting that it may wish to adopt a "more respectful attitude" to ensuring that the distinction between the brands was clear.