Print firm acts to stop rival using similar trading name

A digital printing company that used the name FREE PRINTS has moved to prevent a competitor using the same phrase in its advertising.

Planet Art used the trading name FREE PRINTS as part of its online branding. Another printing company called Photobox began using the phrase FREE PRINTS in its app.

The two companies offered similar services for consumers in providing online digital printing services through mobile applications.

Planet Art brought passing off proceedings, claiming the use of the phrase FREE PRINTS could confuse customers into thinking the two companies were associated with one another, or that Planet Art endorsed Photobox.

The case was due to be heard across a series of shorter trials. Planet Art wished to submit evidence taken from a customer survey, which suggested there was an issue regarding goodwill and misrepresentation.

However, the court denied this request. It ruled that the survey evidence would not be of real assistance in the trial and did not justify the additional cost it would bring.

The survey would not be of real value to the court because the questions were not inherently probative of brand recognition since they did not consider the essentially descriptive nature of the words “”FREE PRINTS””.

The survey also contained leading questions and drew respondents into speculation, contrary to the guidelines.

The case should go ahead in the shorter trials scheme without the survey evidence being submitted.

Please contact Sing Li if you would like more information about the issues raised in this article, or any aspect of protecting your business.