Does scariness amount to detriment?
A fascinating recent judgment by Recorder Amanda Michaels concerned allegations that UK and EU trade marks for FUNTIME, FUN TIME and FUN-TIME for games, toys and playthings and electronic games in class 28 were infringed by action figures, pop vinyl and plush toys sold under the names Funtime Freddy and Funtime Foxy (Luen Fat Metal and Plastic Manufactory Co Ltd v Funko UK, Ltd). These products were derived from the ‘Five Nights at Freddy’s’ (FNAF) horror video game franchise.
The judge found that the evidence “fell short of proving that the Marks had acquired a significant level of enhanced distinctiveness”: the use made of them would have enhanced the distinctiveness of the UK mark to a limited extent, but there was not sufficient use to enhance the distinctiveness of the EUTM.
The claimant’s case under section 10(1) failed because the Funtime Freddy and Funtime Foxy names were not identical to the marks (due to the additional words Freddy and Foxy).
Turning to section 10(2), the judge was not persuaded that there was a likelihood of confusion between the marks and the names, saying: “Despite the similarity of both the Marks/signs and the goods, the absence of any concrete evidence of confusion in circumstances of over four years of side-by-side use suggests that there is no real likelihood of confusion.”
The most interesting part of the judgment concerned the claim under section 10(3). This failed because the judge found that the relevant public would not establish a link between the marks and the names of the products – and she noted that no such connection had been suggested in the evidence.
The claimant had argued that the frightening, unpleasant nature of the FNAF games was bad for children and therefore a link to the trade marks would cause detriment. It relied on evidence from a teacher, Ms Garratt, about the damaging effect of the FNAF games on schoolchildren as well as internet articles and Mumsnet discussions.
But the judge said that, even if there had been a link, no detriment to the marks had been shown. The evidence related to the game itself rather than the merchandise and the toys were “no more intrinsically scary than, say, many pirate or monster models”. She concluded:
“I am therefore satisfied that the evidence as to the scariness and adverse impact of the game upon young children is irrelevant to the allegation of detriment under sub-section 10(3). I do not see that the nature of the FNAF games means that sales of the Defendant’s goods lead to any risk of injury to the distinctive character of the Marks or in any way impede the Claimant’s ability to use its Marks.”
Following the same reasoning, there was no tarnishment or unfair advantage.
The decision is a reminder that section 10(3) infringement is hard to prove without clear, unambiguous evidence of damage to the trade mark. The UK courts (in this case, the IP Enterprise Court) certainly do not fear rejecting claims that do not meet the standard!