Esure Insurance Ltd v Direct Line Insurance Plc
| Jurisdiction | England & Wales |
| Judge | Lady Justice Arden,Lord Justice Jacob,Lord Justice Maurice Kay |
| Judgment Date | 23 July 2008 |
| Neutral Citation | [2008] EWCA Civ 842 |
| Docket Number | Case No: A3/2007/1720/PTA + A |
| Court | Court of Appeal (Civil Division) |
| Date | 23 July 2008 |
[2008] EWCA Civ 842
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
(CHANCERY DIVISION)
LINDSAY J
Royal Courts of Justice
Strand, London, WC2A 2LL
Lady Justice Arden
Lord Justice Jacob and
Lord Justice Maurice Kay
Case No: A3/2007/1720/PTA + A
Mr James Mellor QC & Dr James Whyte (instructed by Taylor Wessing Llp) for the Appellant
Mr Geoffrey Hobbs QC & Mr Guy Hollingworth (instructed by Linklaters Llp) for the Respondent
Hearing dates: 3–4 April 2008
This is a renewed application for permission to appeal from the order dated 5 July 2007 of Lindsay J, with the appeal to follow if permission is granted. The issues on this appeal arise out of opposition proceedings pursuant to s 5 of the Trade Marks Act 1994 (“ TMA 1994”). The opponents contended that the marks sought to be registered were similar and confusing (s 5(2)(b)) relative to their own, and that the marks sought to be registered took unfair advantage of their own marks (s 5(3)). I start by setting out the material provisions of s 5:
“(2) A trade mark shall not be registered if because
(a)…
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with that or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark, …
(b) [repealed]
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”
The background in brief is as follows. The appellant (“esure”) sought to register an image of a computer mouse on wheels for insurance and financial services within class 36. No colour was specified. The respondent (“Direct Line”) is a pioneer of the direct selling of insurance services to the public. It objected, pointing to its use of an image of a red telephone on wheels pursuant to various trade mark registrations within the same class. Both images are three-dimensional. Direct Line adduced survey evidence in support of its evidence on confusion, but this was rejected by the hearing officer because it might have been affected by an advertising campaign conducted by Direct Line. The judge upheld the hearing officer's decision on this point and we have not been concerned with it. But for the defects in the survey evidence, we might not have been concerned with the questions of evidence with which we have been concerned.
The hearing officer in the Trade Marks Registry (Mr Allan James) upheld Direct Line's opposition ( [2008] RPC 99). He held that there was indirect confusion. The judge dismissed an appeal ( [2008] RPC 143). The judge held that there was a material error of principle in the decision of the hearing officer on confusing similarity under s 5(2)(b) of the TMA 1994 in that (a) a threshold level of similarity had to exist and (b) there was no evidence of the likelihood of confusion. Nonetheless, the judge upheld the decision of the hearing officer under s 5(3). esure contends that the judge was right on confusing similarity and that, had he not given inappropriate weight to the evidence of a branding expert on the unfair advantage issue, he would have reached the same conclusion on that point too, with the result that the opposition would have failed. So we are concerned with issues as to the role of expert evidence under s 5, and, in addition, the consequences of non-confusing similarity between non-identical marks under s 5(3). esure's case is that in those circumstances the conditions in s 5(3) cannot be fulfilled, particularly where these is no survey evidence in support.
Both s 5(2)(b) and s 5(3) are designed to implement provisions of Council Directive 89/104 (“the trade mark directive”). They must, therefore, both be interpreted so far as possible so as to give effect to the trade mark directive as interpreted by the Court of Justice of the European Communities (“the Court of Justice”). Under s 5(2)(b), there are two questions: similarity and the likelihood of confusion. The Court of Justice has held that the question whether there is a likelihood of confusion is to be determined (a) globally, that is by taking an overall impression of the two marks and (b) from the standpoint of the average consumer (as to (b), see SABEL, Case C-251/95 [1997] ECR 1–6191).
Issues were raised below which are not pursued on this appeal. Accordingly, it is unnecessary for me comprehensively to summarise the decisions below. (When I refer to paragraphs of the hearing officer's decision or the judge's judgment, I add the letter H or J respectively to identify the relevant decision.)
Relevant provisions of the trade mark directive
The following provisions of art 4 are relevant:
“(1) A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a) …
(b)if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark.
(4) Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;…”
The Court of Justice has held that art 4(3) applies both where the goods or services are similar and where they are dissimilar: Davidoff v Gofkid, Case C-292/00 [2003] ECR 1–00389.
Some of the decisions of the Court of Justice concern arts 5(1)(b) and 5(2), which are the parallel provisions on infringement. They provide as follows:
“(1) The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
(2) Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
The hearing officer's decision
The hearing officer rejected esure's argument that there was a minimum level of similarity. It was sufficient if there was any visual, aural or conceptual similarity between the marks which is likely to be recognised as such by an average consumer (H[110]). The level of similarity would depend on the circumstances of the case. In the present case, taking the requisite overall view, by the attaching of wheels to an electronic communication device, there were similarities, which were in part visual (due to similarities in the styling) but more particularly, conceptual, between the two marks (H[114], [134]). This would be confirmed if esure used red for its device. If the colour red was used, there was likely to be indirect confusion with Direct Line's mark (H[143]). The objection under s 5(2)(b) succeeded.
The hearing officer rejected the submission that under s 5(3) account could be taken of the risk that future development of the mark would be fettered (H[150]). S 5(3) did not require proof of direct or indirect confusion. It was sufficient that the...
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