Source: All England Reporter
Publisher Citation: [2015] All ER (D) 211 (May)
Neutral Citation: [2015] EWHC 1313 (IPEC)
Court: Intellectual Property Enterprise Court

Iain Purvis QC (Sitting as an Enterprise Judge)

Representation Chris Hall (instructed by Trainer Shepherd Phillips Melin Haynes Solicitors) for the claimant.
  Denise McFarland (instructed by Lupton Fawcett Denison Till Solicitors) for the defendants.
Judgment Dates: 19 May 2015


Passing off - Descriptive name - Remedies - Account of profits - Claimant alleging passing off in respect of nail care products manufactured by second defendant in United States of America and sold by first and third defendants in United Kingdom under trade mark 'LUMOS' - Claimant selling anti-aging skin care products under same name - Court of Appeal, Civil Division, reversing lower court's decision and finding likelihood of confusion - Defendants being ordered to give account of profits - Whether account should be given by second defendant - Total revenue derived by defendants from sale of products - Total figure on account of profits.

The Case

Passing off Descriptive name. The proceedings concerned an action for passing off in respect of nail care products manufactured by the second defendant in the United States of America and sold by the first and third defendants in the United Kingdom under the trade mark 'LUMOS'. The claimants sold anti-ageing skin care products under the same name. The claim was dismissed at trial, but reversed on appeal. The defendants were ordered to account for their profits accrued by reason of the passing off. The Intellectual Property and Enterprise Court determined the total figure on account of profits and rejected the second defendant's contention that it was not liable to account where the profits had arisen from sales to the first and third defendants which had taken place outside the UK and where they had not involved a misrepresentation.

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