Bambino Mio Limted v Cazitex NV
| Jurisdiction | England & Wales |
| Judge | Sir John Chadwick,Lord Justice Patten,Lord Justice Jacob,Lord Justice Mummery,I |
| Judgment Date | 29 July 2009 |
| Neutral Citation | [2009] EWCA Civ 702,[2009] EWCA Civ 922 |
| Court | Court of Appeal (Civil Division) |
| Date | 29 July 2009 |
| Docket Number | Case No: A3/2008/3032 |
[2009] EWCA Civ 702
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(HIS HONOUR JUDGE PELLING)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Mummery
Case No: A3/2008/3032
Mr R Wyand QC (instructed by Howes Percivals LLP) appeared on behalf of the Appellant
Ms I Berkeley (instructed by Messrs Collyer Bristow) appeared on behalf of the Respondent.
Lord Justice Mummery:
This is a renewed application for permission to appeal in a trademark case. The applicants, who are represented by Mr Roger Wyand QC, are Bambino Mio Limited; and the judgment which they wish to appeal is that given by HHJ Pelling QC on 13 November 2008 when he dismissed claims by Bambino Mio for infringement of their trademark for nappies.
The application for permission was refused by the judge for reasons which are found in tab 3 of the bundle, which Mr Wyand says itself disclosed that the judge applied the wrong legal test to determine whether his client's trademark had been infringed. An application was then considered by Rimer LJ on the papers and he refused permission, saying that the grounds of appeal and skeleton argument did not persuade him that the judge did other than approach the relevant question of fact with reference to the correct considerations, or that his decision was one that he was not properly entitled to reach. So he concluded the applicants had not got any real prospect of persuading the Court of Appeal to substitute a different view.
Now before me are not only the materials that were before Rimer LJ, but there is also a statement dated 12 March 2009 in accordance with paragraph 4.14A(2) of the Practice Direction to CPR Part 52. I should also mention that there is what is called a Jolly v Jay submission from the respondent, Cazitex Limited. Ms Berkeley has a watching brief in court today but I have not called on her to add anything to what is said in those written submissions. The respondent's objection in those submissions to granting permission is trenchantly stated as that this is a pointless appeal, that the damages which could be awarded are only trivial and no injunction was pursued and there were no materials to be delivered up. It is submitted that the only purpose of this appeal is to revisit the questions of costs and it is submitted that there is nothing wrong in law with the judge's reasoning as to why this was not a case of infringement.
Having considered Mr Wyand's oral submissions, which have taken me to the passages in the judgment on which he relies for showing that the judge applied the incorrect test, in particular paragraphs 33, 34, 43 and also parts of paragraphs 24 and 32, I am satisfied that it is reasonably arguable by the applicants that the judge did not take account properly of the identity of the goods in making a global assessment, which he had to make for the purposes of deciding whether there was an infringement. I am not going to go into any more elaborate details of the arguments; that is a matter which should be done by the three judges that hear this appeal. I think there is a good enough case for saying that the judge applied the wrong test to justify granting permission.
As for the all the points that are made in the Jolly v Jay statement, the respondents can make those points on the full appeal and if they turn out to be right the appeal will be thrown out and they will be able to ask for costs, but I do not think it can be said at this stage that there is not any point in this appeal or that there is nothing in it. I am satisfied there is.
I grant permission to appeal.
Order: Application granted
[2009] EWCA Civ 922
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(HIS HONOUR JUDGE PELLING)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Jacob
Lord Justice Patten and
Sir John Chadwick
Case No: A3/2008/3032
Mr A Norris and R Wyand QC (instructed by Howes Percival LLP) appeared on behalf of the Appellant.
Mr D Alexander QC (instructed by Collyer Bristow) appeared on behalf of the Respondent.
(Draft for Approval)
This is an appeal from an order made on 13 November 2008 by HHJ Pelling QC, sitting as a judge of the High Court in trademark proceedings. The claimant, Bambino Mio Ltd, is the owner of the registered UK trademark 2324213 for the wordmark “Bambino Mio” (“the mark”) in respect of goods in classes 3, 6, 21 and 25.
The defendant, Cazitex MV, a Belgian company, manufactures and sells through agents in the United Kingdom reusable nappies falling within class 25. For a few months at the beginning of 2007, that product was sold under the name or sign “Bambineo” (“the sign”). Following objection by the claimant in a letter from its trademark agents dated 19 March 2007, the defendant informed the claimant that it would discontinue use of that sign. The judge found that from 23 May 2007 the defendant's product was sold in the United Kingdom under a different name, “Bambinex”, in respect of which the claimant has made no objection.
Nevertheless the present proceedings for infringement were commenced on 5 June 2007 claiming an injunction, delivery up or destruction of the allegedly infringing goods and an inquiry as to damages or an account of profits. The judge observed, at paragraph 1 of his judgment, that the only substantive remedy sought at the trial was an inquiry or an account. On the evidence of the defendant's managing director, the sales of the defendant's product under the name “Bambino” in the first few months of 2007 were commercially insignificant and not generating a profit.
The claim for infringement is brought under section 10(2)(b) of the Trademarks Act 1994. The section is in these terms so far as material:
“A person infringes a registered trade mark if he uses in the course of trade a sign where because—
…
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”
It is also common ground, first, that section 10(2)(b) of the 1994 Act gives effect to Article 5.1(b) of the EC directive No 89 of 1994 harmonising trademark law and must be construed accordingly with the Community jurisprudence and, second, that the factors to be taken into account in assessing the likelihood of confusion are conveniently and correctly summarised by Kitchin J in Julius Sämann Ltd & Ors v Tetrosyl Ltd [2006] EWHC 529 (Ch) at [51]; [2006] ETMR 75 1043 at 1060–1061. Those factors are, as Kitchin J observed, well-established. The judge set out Kitchin J's summary at paragraph 16 of his judgment in the present case. It is unnecessary for me to rehearse it again in this judgment.
At paragraphs 17 to 34 the judge addressed a number of the factors identified by Kitchin J in Sämann. In particular, at paragraph 17 of his judgment, the judge accepted that the evidence clearly established that the claimant had a substantial reputation and goodwill in the mark. He observed that the claimant was a market leader in the relevant product industry and the material before him showed its product to be clearly identified and identifiable by reference to the mark.
Inn paragraph 18 he went on to direct himself as to what he described as the average consumer test. That is a reference to the second factor identified in the Sämann case, that:
“The matter must be judged through the eyes of the average consumer of the goods in issue, who is deemed to be reasonably well informed and reasonably observant and circumspect”
The judge referred to the observations of my Lord, Jacob LJ, in Reid Executive plc v Rees Business Information Ltd [2004] RPC 40; [2004] EWCA Civ 159 and to the observations of Mr Geoffrey Hobbs QC, sitting as a deputy judge of the High Court, in Whirlpool Corporation v Kenwood [2004] EWHC 1930 (Ch) at paragraph 69. Jacobs LJ's observations were at paragraph 82 of his judgment in Reid.
The judge then examined, at paragraphs 24 and 25, such evidence as there was on that issue. As he said at paragraph 24:
“I start by setting out my conclusions as to the average purchaser of the goods in issue. There is relatively little evidence from which to draw conclusions on this point.”
He reached a conclusion on that matter at paragraph 26, where he said this:
“All of this suggests that the risk of confusion is likely to be relatively low for the relevant average purchaser unless the relevant similarities between mark and sign are relatively substantial since it is likely that a parent who has carried out research and identified the product that he or she wishes to purchase is unlikely to become confused other than in such circumstances…”
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IP Snapshot - September/October 2009
...without putting quality control mechanisms in place. For the full text of the decision, click here. Bambino Mio Limited v Cazitex N.V [2009] EWCA Civ 922, 29 July 2009 The Court of Appeal upheld the High Court's finding that the sign, "Bambineo" used in the sale of nappies, did not infringe......