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Skin Care Company Triumphs in Passing Off Claim

In a ruling that underlines that even the smallest business can succeed in protecting its intellectual property rights, a modest skin care company has triumphed in a passing off claim against much larger rivals who used the same name to market their nail care products.

Specialist anti-ageing creams marketed by Lumos Skincare Limited (the claimant) since 2007 retail at up to £100-a-bottle but its turnover of about £40,000-a-year was dwarfed by its rivals (the defendants) when they launched their much cheaper nail care products onto the mass market in 2011.

Both claimant and defendants sold their wares under the ‘LUMOS’ mark and the claimant argued that had given rise to confusion amongst shoppers, damaging its market, trade reputation and brand name. Those arguments failed before the Patents County Court which ruled that there had been no misrepresentation by the defendants.

In allowing the claimant’s appeal and granting an injunction to restrain passing off by the defendants, the Court of Appeal noted that the claimant had established goodwill in the LUMOS name and that both the claimant’s and the defendants’ products were promoted and sold in the same salons.

Although the claimant’s good will and reputation amongst end-users was relatively modest and limited to high-end anti-ageing products, the court ruled that there was sufficient evidence to justify the inference that a significant number of the claimant’s actual or potential customers would be likely to be misled by the defendants’ use of the LUMOS mark into thinking that their nail care products were associated with the claimant.