PlanetArt takes on Free Prints trademark claim against Photobox
PlanetArt, which operates the FreePrints app, has succeeded in a trademark infringement claim against competitor Photobox, according to a report at Bristows by Sean Ibbertson. The claim was related to an app that Photobox launched last year to provide prints of photos for free; PlanetArt had been offering its own “FreePrints” app since 2014 on both the Apple App store and the Google Play store. PlanetArt runs a wide variety of printing brands, including “simplytoimpress,” “Personal Creations“, “photo affections“, “Canvas World,” and “My Custom Case.” Mobile apps include the aforementioned “FreePrints,” plus “FreePrints Photo Books“, “FreePrints Photo Tiles,” “ink cards” and “Postagram.”
The judgment by judge Daniel Alexander QC “shows the fine margins and nuances at play in trademark law where a claimant alleges that it has acquired rights in a phrase which is inherently descriptive of the nature of its business, in this case, ‘FreePrints’,” the article said.
The app, which was downloaded more than 11 million times in the United Kingdom and had generated more than 3 billion impressions, was well known at “FreePrints” as a composite word. The article cited that, in April 2019, Photobox launched its own competing app.
PlanetArt made three complaints about three signs used by Photobox for a similar service.; the judge drew different conclusions for each.
By the time the case came to trial, PlanetArt’s primary claim was for trademark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994. It relied on the registered trademark shown below. The mark was applied for the day before PlanetArt sent a letter before action to Photobox. The trademark entered the UK register in August 2019.
PlanetArt’s registered trademark is shown here on the left:
PlanetArt said the two icons used Photobox below on the right were too close.
According to the article, Judge Alexander found these icons infringed on PlanetArt’s trademark, citing “significant similarities in the aural and visual elements of the sign and some (more limited) conceptual similarities. The Photobox icon was a similar turquoise colour to PlanetArt’s, also featured a simple white line drawing, and beneath the icon were the words ‘Free Prints’.”
The author added Photobox may have avoided the infringement if the company executives had chosen to add words to indicate the app orginated from Photobox.
The judge noted that apps of this kind invariably used the words beneath the logo to show their brand name, rather than a description of the app or the service provided…Whilst the judge expressed some sympathy that there is a limit on the number of characters which an app developer can use beneath the icon, he also noted that it was not clear from the evidence why the full name ‘Photobox Free Prints’ was not used, since this is within the 30-character limit set by the app store.
On the other hand, the judge said the Photobox app listing in the stores (shown below at left) did not infringe on the PlanetArt trademark; neither did the mark shown at below right), which was used in email communications to existing customers.
The judge found, since both of these prominently featured the “Photobox” name “in a position and manner where ordinarily consumers would expect a brand to be found.”
“Whilst the judge was persuaded that PlanetArt had some goodwill in ‘FreePrints’, and that the term had acquired a secondary meaning in that it had come to distinguish the claimant, he was not persuaded that Photobox’s signs amounted to a misrepresentation,” wrote Ibbertson.