Victoria Plum v Victorian Plumbing: both sides prevail

The English High Court has ruled in a dispute between two bathroom companies that one is liable for infringing trademarks but that the same company should itself be paid for the other’s passing off.

Mr Justice Henry Carr  ruled on Friday, November 18 that defendant Victorian Plumbing infringed Victoria Plum’s trademarks. But he also ruled that Victorian Plumbing was successful on its passing off counterclaim.

The dispute centres on a UK word and figurative mark for ‘Victoria Plumb’, and the term ‘Victoriaplum.com’, registered at the European Union Intellectual Property Office.

Victoria Plum has been trading since 2001, and changed its name last year from Victoria Plumb.

In his decision, Carr focused on the infringement of UK trademark number 3,066,332 for ‘Victoria Plumb’ (the word mark), which covers “the bringing together, for the benefit of others, of … [bathroom items] … enabling customers to conveniently view and purchase those goods … via a website”.

Victoria Plum argued that Victorian Plumbing’s bid for the marks as online search engine terms, or ‘keywords’, infringed the marks.

Victorian Plumbing admitted that the keyword signs Victorian Plumbing, Victorian Plum and Victoria Plumbing are confusingly similar to Victoria Plum’s marks, but submitted a defence of honest concurrent use.

Carr ruled that Victorian Plumbing was liable for trademark infringement but had won on passing off.

Victorian Plumbing filed a counterclaim for passing off and argued that because it stopped bidding on the keywords this year, Victoria Plum is “estopped” from pursuing its trademark infringement claim.

Chris McLeod, partner at Elkington & Fife and immediate past-president of the Institute of Trade Mark Attorneys, said: “The defendant’s success at passing off may offset the costs it has to pay in the context of the trademark infringement, but I would not expect this to cover them.”

He said that by the time Victorian Plumbing began bidding on the keywords, in 2011, the company had “sufficient goodwill” in the name ‘Victorian Plumbing’ to “enable it to bring a passing off action against use of that name by the claimant”.

Mark Radcliffe, managing director of Victorian Plumbing,  said: “We are glad that the initial stage of our dispute with Victoria Plum is over. The court’s decision is being reviewed by our legal team and aspects of the ruling may be appealed.

“That aside, we now intend to move on to pursue our goals of continuing as one of the highest rated online bathroom retailers in the country in peace.”

Joel Smith, partner at Herbert Smith Freehills, said that the decision is "an important application of the principles from the string of key Court of Justice of the European Union cases on keyword advertising".

He added: "Interestingly, the court rejected a suggestion that Victorian Plumbing was an honest concurrent user as a defence to trademark infringement. It also rejected the notion that Victoria Plum could no longer complain now, by virtue of estoppel or acquiescence."

Smith said that the judge had found that in the context of keyword advertising, there was a "greater likelihood of confusion and therefore there needed to be greater transparency in who is behind advertising, if it was not connected to the trademark proprietor".