“Retail and wholesale services including on-line and mail order retail and wholesale services in connection with the sale of video games, video games cartridges, video game software, video game apparatus, gamin apparatus and instruments, computer games, computer games software, handheld video games, handheld computer games, headsets for video and computer games, batteries, battery charges, compact discs, digital versatile discs, audiovisual recordings, cases for smartphones and tablet computers, clothing, footwear and headgear, toys, games, playthings, watches, ties, gloves, cufflinks, fancy dress costumes, jewellery, bags, wallets, purses, swimwear, electronic gadgets, usb drives, lighting equipment and apparatus, magazines, comics, printed matter, books, stationery, Christmas decorations, mugs, textile goods, blankets, rugs, towels, bedding, linen, kitchenware products, household and kitchen utensils, cutlery, office equipment, office desk toys and gadgets, posters, stickers, umbrellas, key rings, novelty gift items, food and drink, alcoholic beverages, board games, figurines, plush toys, biscuit containers, cups, corkscrews, cooking apparatus and instruments.”
“12) This comes from Mr Adam Symonds, co-founder and director of [AP]. 13) Mr Symonds states that the domain name www.geekcore.co.uk was registered on13 October 2009 and [AP] was set up on17 September 2010 . Supporting documents are provided showing the registration of the domain name and date of incorporation of the business. [Exhibit AS1] 14) Mr Symonds states that [AP] operates under the trading name GEEKCORE and specialises in the on-line retail of a wide range of merchandise particularly licensed products relating to television shows, movies and video games. The products typically include gadgets, clothing, mugs, toys, games, bags, jewellery, costumes, electronic gadgets, plush toys and gaming related goods. [AP] has been trading under the name GEEKCORE since as early as12 November 2014 . In support of this, a print from www.geekcore.co.uk is provided, showing the ‘About Us’ page. The mark GEEKCORE (stylised) is present at the top of the page. It is undated aside from the print date of3 April 2019 . [Exhibit AS2] 15) [AP] operates a Facebook page which was created on19 November 2014 , shortly after it began trading in the UK. There are currently just under 19,000 followers. Various adverts on the page show a puzzle, a hoodie, a baseball cap, a bag, spiced rum, a figurine, a mug and Christmas jumpers. The adverts all appear to be recent, emanating from 2019. [Exhibit AS3] 16) Mr Symonds explains that [AP] has business relationships with a number of product suppliers. One of the suppliers it has worked with for a number of years is Rubber Road Limited (‘RRL’). [AP] obtained wholesale products from this company during the three years preceding these proceedings (20152018). Mr Symonds states that RRL was the original applicant of trade mark applications ‘610 and ‘527 and that those applications were subsequently assigned to [YBL]. RRL and [YBL] share the same directors, Benjamin Alun Grant and Matthew Martin Precious. Mr Symonds states that RRL is therefore fully aware of [AP]’s business and activities under the name GEEKCORE. Prints from the IPO database are provided showing that mark ‘610 was originally applied for by RRL then assigned to [YBL] on12 July 2018 . Mark ‘527, on the other hand, appears to have been filed by [YBL] (it does not appear that it has ever been in the name of RRL). Prints from Companies House database are also provided showing that RRL has five directors, three of whom are Benjamin Alun Grant, Matthew Martin Precious and Liam Michael Taylor. Party B has three directors, two of whom are Benjamin Alun Grant and Matthew Martin Precious. [Exhibit AS4] 17) Mr Symonds explains that, at a meeting on18 May 2018 with Liam Taylor, the commercial director for RRL, [AP] was informed by Mr Taylor that RRL intended to rebrand its retail operations as GEEKSTORE. Formerly, RRL used the brand YELLOW BULLDOG for its retail operations. At the meeting, [AP] immediately voiced its concerns and objected to the proposed re-branding, explaining to Mr Taylor that GEEKSTORE was simply too close to its own brand GEEKCORE. Following the meeting, [AP] sent an email to Mr Taylor on19 May 2018 explaining further its reasons for objecting to the choice of name. No response was received and following the launch of the GEEKSTORE retail operation and the filing of the trade mark applications it has been necessary to take action by filing the subject oppositions. Mr Symonds provides a copy of his email to Mr Taylor dated19 May 2018 and a number of other emails between [AP] and RRL which he states clearly shows a long business relationship. [Exhibit AS5] 18) Mr Symonds states that RRL and [YBL] have filed the subject applications and commenced trading under the name GEEKSTORE in full knowledge of [AP]’s prior and longstanding use of the name GEEKCORE and with the intention of benefitting from [AP]’s business. 19) As evidence of [AP]’s trading activity, Mr Symonds provides copies of the company’s accounts from 2013 to 2018. [Exhibit AS6] 20) Mr Symonds also provides prints from the Wayback Machine Archive website, which he states shows the number of captures of [AP]’s website between 2013 and 2018. Examples of dated pages are also included. [Exhibit AS7] The website pages bear the mark GEEK CORE. There are numerous pages appearing to emanate from 2014 – 2018. There are a wide range of goods listed on the website including various items of clothing such as Christmas jumpers, bath robes and hoodies, toys, figurines, watches, hats, backpacks and novelty mugs. Many of the goods are branded with the names of movies such as Star Wars and Harry Potter or computer games such [as] Nintendo, Minecraft and Street Fighter. 21) A print from Goggle Analytics showing website traffic to www.geekcore.co.uk is provided from July 2013 to March 2019. [Exhibit AS8] The number of users is 1,005,591 and the number of page views is 3,576,586. 30% of visitors to the site are returning visitors. For each year there are distinct website traffic peaks in the period leading up to Christmas. 22) Mr Symonds provides a spreadsheet of historical sales transactions and copies of ten invoices (these are said to be examples rather than an exhaustive list of all invoices issued by Party A). None of the invoices give any details or description of the item that was purchased. Mr Symonds states that this information has not been provided for privacy reasons. The invoices are dated from July 2016 to April 2017 and are issued to customers in various UK locations such as Dover, Holyhead, Stoke on Trent, Windsor and Milton Keynes. One is to a customer in the Netherlands. The historical list of sales transactions consists of a list of over 60 pages showing, inter alia, the date of purchase, name of purchaser, amount in £ and country (the vast majority of which are in the UK). Again, there is no indication of the kind of item that was purchased for any of the transactions in the list. [Exhibit AS9] 23) Mr Symonds states that [AP] has a rating of 9.7/10 on Trustpilot. He provides a selection of customer reviews dated 2017-2018. Some of the reviews refer to the kind of product that was purchased which are hats, hoodies and jumpers. [Exhibit AS10] 24) Mr Symonds states that the turnover for [AP] has steadily increased since the business commenced trading in 2014. He provides a graph showing Google Ad marketing spend for December 2014 – December 2018 totalling£111,000 . There is also a graph which Mr Symonds states relates to sales from August 2015 to December 2018, totalling£864,172 . [Exhibit AS11] 25) Mr Symonds provides a copy of the first public Facebook post for GEEKCORE dated10 February 2015 urging customers to place an order. Also provided are copies of three advertisements on Facebook dated October 2015 and October 2016 for Christmas jumpers. Mr Symonds states that those jumpers were sourced from RRL. The last advertisement from Facebook, dated January 2017, shows a GEEKCORE branded box being offered as a prize in a competition. The box contains various items including a travel mug and toys/figurines. [Exhibit AS12] 26) Finally, Mr Symonds provides prints from [YBL]’s website, www.geekstore.co.uk, including internet archive captures. He states that the GEEKSTORE website, which did not commence trading until shortly after March 2018, is highly similar in content, layout and general appearance to [AP]’s website. The website pages bear the mark GEEK STORE (stylised in the same manner as applications ‘610 and ‘527). [Exhibit AS13] He states that this supports his belief that [YBL] has copied [AP]’s retail operation and is attempting to imitate the latter’s retail operation and success.”
“50) [AP]’s evidence is not without deficiencies. I am particularly mindful of the lack of any indication of the kind of goods that were the subject of the invoices and transactions listed in Exhibit AS9. That said, I remind myself that it is not a case of considering each piece of evidence in isolation but rather, I must stand back and view the evidence collectively. There are numerous captures of [AP]’s website spanning 20142018. The primary sign used on that website appears to have been the mark GEEK CORE/GEEKCORE. Over that time the website has listed a variety of goods for sale, many of which accord with those specified by Mr Symonds in his statement (Exhibit AS7). The website appears to have been in operation since at least November 2014. The website traffic data indicates that the website has attracted a steady number of visitors since that time with peaks leading up to the Christmas period every year. [AP] has also spent a not inconsiderable [sum] on Google Adword advertising and has generated sales of more than a trivial amount in the four years prior to the relevant dates (Exhibit AS11). Viewing the evidence in the round, I am satisfied that, it is more probable than not that, [AP] had a protectable goodwill at both relevant dates of, at least, a moderate level. On the basis of the evidence before me, I accept that the goodwill was in an online retail business connected with the sale of clothing, bags, toys, figurines and novelty mugs (at least) and the sign which was associated with, or distinctive of, that business was GEEKCORE.”
“56) I would expect the sign GEEKCORE to be immediately perceived as a distinctive whole but also, at the same time, as two well-known English words conjoined i.e. GEEK and CORE. In terms of the contested marks, the device (of the blue background, the box containing various items and the black circle) is a distinctive element and makes a strong contribution to the overall impression of the mark; it is striking on the eye and takes up a large proportion of the mark as a whole. GEEK STORE is also a distinctive element of the mark (although, within that element, more focus is likely to be placed upon the word GEEK than STORE given the relatively greater descriptive nature of the latter word as compared with the former). I would expect GEEK STORE and the device to have roughly equal impact on the consumer. There is a clear point of similarity between the sign and the contested marks, owing to the common presence of the word GEEK. There are also differences given the presence/absence of the respective words CORE and STORE (although those words do share the same three letters ‘ORE’) and the presence of the device element in the contested marks which have no counterpart in the earlier sign. I find there to be a low degree of visual similarity between the contested marks and the earlier sign. In terms of the aural aspect, the comparison is between GEEK STORE and GEEK CORE. There is clearly a high degree of aural similarity. Turning to the conceptual position, I would expect GEEK STORE to be perceived as a shop for geeks. GEEKCORE, as a whole, does not have any clear meaning but I would expect the idea of something geeky or geek related to be retained in the consumer’s mind. On that basis, I find a medium degree of conceptual similarity.”
“57) Both of [YBL]’s applications are in respect of retail services (which includes online retail services) connected with the sale of various goods. A number of those retail services (bearing in mind the specific goods to which they relate) are identical to the retail services in which [AP] has satisfied me that it has the requisite goodwill. The relative [I interpose that this might be a typo for “relevant”] field of activity is, to that extent, therefore identical. 58) I now turn to [YBL]’s retail services which relate to other kinds of goods (e.g. video games, Christmas decorations, homeware, jewellery etc.). Although [AP]’s evidence has not satisfied me that it has goodwill in online retail services related to all of the types of goods claimed in its notice of opposition, the evidence nevertheless suggests that the nature of its retail business is of one which offers a wide selection of goods. It would be no stretch of the imagination for it to also provide retail services connected with the sale of all the various goods covered by [YBL]’s applications. In particular, I note that a number of [AP]’s goods tend to relate to video games/movies (i.e. t-shirts bearing images from said games and movies). There is a clear link here between the nature of the goods in which it has goodwill and [YBL]’s retail services connected with the sale of video games, for example.”
“59) Bearing in mind the degree of similarity between the earlier sign and the contested marks, the identity, and overlap, between the respective services, together with the moderate level of goodwill in [AP]’s business, I find that a substantial number of [AP]’s customers, or potential customers, are likely to believe that the services provided under [YBL]’s marks are the responsibility of [AP]. A misrepresentation will arise in respect of all the services applied for. The damage that follows is likely to be in the form of loss of sales for [AP], with customers using [YBL]’s services instead. Damage can also come in other forms. In Ewing v Buttercup Margarine Company, Limited,[1917] 2 Ch. 1 (COA), Warrington L.J. stated that: “To induce the belief that my business is a branch of another man's business may do that other man damage in various ways. The quality of goods I sell, the kind of business I do, the credit or otherwise which I enjoy are all things which may injure the other man who is assumed wrongly to be associated with me.” ” “To induce the belief that my business is a branch of another man's business may do that other man damage in various ways. The quality of goods I sell, the kind of business I do, the credit or otherwise which I enjoy are all things which may injure the other man who is assumed wrongly to be associated with me.” ”
“In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer’s specialised experience. (It is interesting to compare the observations made by Lord Radcliffe in Edwards v Bairstow [1956] A.C. 14 at pp.38–39, about the general commissioners, a tribunal with a specialised function but often little specialised training.) On the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”
“114 Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to the evaluation of those facts and to inferences to be drawn from them. The best known of these cases are: Biogen Inc v Medeva plc [1977] R.P.C.1; Piglowska v Piglowski [1999] 1 W.L.R. 1360; Datec Electronics Holdings Ltd v United Parcels Service Ltd[2007] UKHL 23 ; [2007] 1 W.L.R. 1325; Re B (A Child) (Care Proceedings: Threshold Criteria)[2013] UKSC 33 ; [2013] 1 W.L.R. 1911 and most recently and comprehensively McGraddie v McGraddie[2013] UKSC 58 ; [2013] 1 W.L.R. 2477. These are all decisions either of the House of Lords or of the Supreme Court. The reasons for this approach are many. They include i. The expertise of a trial judge is in determining what facts are relevant to the legal issues to be decided, and what those facts are if they are disputed. ii. The trial is not a dress rehearsal. It is the first and last night of the show. iii. Duplication of the trial judge’s role on appeal is a disproportionate use of the limited resources of an appellate court, and will seldom lead to a different outcome in an individual case. iv. In making his decisions the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping. v. The atmosphere of the courtroom cannot, in any event, be recreated by reference to documents (including transcripts of evidence). vi. Thus even if it were possible to duplicate the role of the trial judge, it cannot in practice be done. 115 It is also important to have in mind the role of a judgment given after trial. The primary function of a first instance judge is to find facts and identify the crucial legal points and to advance reasons for deciding them in a particular way. He should give his reasons in sufficient detail to show the parties and, if need be, the Court of Appeal the principles on which he has acted and the reasons that have led him to his decision. They need not be elaborate. There is no duty on a judge, in giving his reasons, to deal with every argument presented by counsel in support of his case. His function is to reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury. Nor need he deal at any length with matters that are not disputed. It is sufficient if what he says shows the basis on which he has acted. These are not controversial observations: see Customs and Excise Commissioners v A[2002] EWCA Civ 1039 ; [2003] Fam. 55; Bekoe v Broomes[2005] UKPC 39 ; Argos Ltd v Office of Fair Trading[2006] EWCA Civ 1318 ; [2006] U.K.C.L.R. 1135.” i. The expertise of a trial judge is in determining what facts are relevant to the legal issues to be decided, and what those facts are if they are disputed. ii. The trial is not a dress rehearsal. It is the first and last night of the show. iii. Duplication of the trial judge’s role on appeal is a disproportionate use of the limited resources of an appellate court, and will seldom lead to a different outcome in an individual case. iv. In making his decisions the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping. v. The atmosphere of the courtroom cannot, in any event, be recreated by reference to documents (including transcripts of evidence). vi. Thus even if it were possible to duplicate the role of the trial judge, it cannot in practice be done. Trading[2006] EWCA Civ 1318 ; [2006] U.K.C.L.R. 1135.”
“76. So, on a challenge to an evaluative decision of a first instance judge, the appeal court does not carry out a balancing task afresh but must ask whether the decision of the judge was wrong by reason of some identifiable flaw in the judge’s treatment of the question to be decided, “such as a gap in logic, a lack of consistency, or a failure to take account of some material factor, which undermines the cogency of the conclusion”. ” conclusion”. ”
“It would be no stretch of the imagination for [AP] to also provide retail services connected with the sale of all the various goods covered by [YBL]’s applications. In particular, I note that a number of [AP]’s goods tend to relate to video games/movies (i.e. t-shirts bearing images from said games and movies). There is a clear link here between the nature of the goods in which it has goodwill and [YBL]’s retail services connected with the sale of video games, for example.”