A Weak Mark, a Strong Case: Practical Lessons for Brand Owners from Flowerbx

The Intellectual Property Enterprise Court (IPEC) has found that luxury online florist Flowerbx Limited's trade mark FLOWERBX is valid and has been infringed by Flowers Box London Limited's use of the signs FLOWERSBOX, FLOWERS BOX and FLOWERS BOX LONDON. 

The decision is a useful reminder that combining descriptive words does not necessarily result in a descriptive trade mark, and that strong evidence of brand recognition and actual consumer confusion can play an important role in establishing infringement.

The IPEC Decision 

The mark was not descriptive and the invalidity counterclaim failed

The IPEC accepted that FLOWERBX would be visually and conceptually processed as "flower box", but held that this did not make it descriptive of the challenged goods and services. The key question was whether the words would enable the average consumer immediately to identify, without further thought, a characteristic of the goods or services in question.

The Court found that "flower box" would be understood as a box in which flowers are contained, rather than referring to the flowers themselves, and that there was insufficient evidence to show that the relevant public would understand "flower box" as descriptive of flowers, bouquets or related retail services. The invalidity counterclaim was therefore dismissed. 

Distinctive Character

The Court found that FLOWERBX had acquired at least a medium level of distinctive character by April 2019, prior to the Defendant's incorporation. This was supported by the Claimant's turnover, significant marketing spend and media coverage. 

Likelihood of Confusion

The Court found a high level of visual, aural and conceptual similarity. FLOWERSBOX was considered highly similar to FLOWERBX, and the addition of LONDON and a gold capital "B" reduced but did not eliminate the similarity. The Court placed particular weight on the context of online trade, noting that visual and conceptual similarity was paramount where both parties operated predominantly online. 

Critically, the Court considered extensive evidence of actual confusion, including customers placing orders with the Defendant believing they were dealing with the Claimant, misdirected Trustpilot reviews, and business enquiries sent to the wrong company. The Court rejected the Defendant's characterisation of these instances as mere "administrative errors," holding that the parties had "crashed into each other" despite the many other florists in the market, and the only likely explanation lay in the high degree of similarity between the signs and the mark. 

Unfair Advantage

The Court also found that the Defendant had taken unfair advantage of the reputation in the mark. Consumers had purchased the Defendant's goods believing them to be the Claimant's, and misdirected Trustpilot reviews may have further influenced purchasing decisions. The Defendant's awareness of the Claimant from at least July 2019, its periodic visits to the Claimant's website and its use of the Claimant's photographs all reinforced the finding. 

Key takeaways

Where marks contain otherwise arguably descriptive words, enforcement can be difficult. The decision highlights the value of maintaining clear evidence of brand reputation, including marketing spend, media coverage and consumer engagement, which may be important in establishing distinctive character and reputation. For premium brands, evidence of positioning and prestige can be just as important as sales figures. 

Brand owners should also preserve evidence of actual confusion where it is available, including misdirected communications and online reviews, as this may become important evidence in subsequent enforcement action.  Whilst it isn’t necessary evidence, it can be very persuasive. 

This article was co-authored by Abigail Cropper and Holly Webb. If you wish to discuss any of the matters raised in this article, please contact Emily Roberts, Holly Webb or your usual IP team contact.

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