J.W. Spear & Sons Ltd and Others v Zynga Inc. (a corporation organised under the laws of the State of Delaware in the United States of America)

JurisdictionEngland & Wales
JudgeLady Justice Hallett
Judgment Date16 December 2015
Neutral Citation[2015] EWCA Civ 290
Docket NumberA2/2015/0358
CourtCourt of Appeal (Civil Division)
Date16 December 2015
Schubert Murphy
Claimant/Applicant
and
The Law Society
Defendant/Respondent

[2015] EWCA Civ 290

BEFORE:

Lady Justice Hallett

A2/2015/0358

IN THE SUPREME COURT OF JUDICATURE

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

QUEEN'S BENCH DIVISION

(MITTING J)

Royal Courts of Justice

Strand

London, WC2

Mr T Dutton QC & Mr R Allen (instructed by Bevan Brittan) appeared on behalf of the Applicant

Lady Justice Hallett
1

I do not need to rehearse the facts because they have been fully set out in the judgment of Mitting J, dated 17th December 2014, that is the subject of this renewed application for permission to appeal.

2

Mr Timothy Dutton QC and Mr Rupert Allen wish to argue on behalf of The Law Society the following issue: is there a real prospect of establishing that the Law Society owed a duty of care to the claimant arising out of the performance of its (statutory) functions?

3

For present purposes The Law Society is prepared to accept all the claimant's assertions of fact.

4

I understand the concerns of Mitting J, to ensure that all matters are resolved during the course of the same proceedings and the concerns of Briggs LJ, who refused permission to appeal, given the inevitable delay that would result if permission is granted. However, as Briggs LJ observed, the Law Society has advanced a powerful case that it has a very strong prospect of a successful defence to the claim.

5

I have considered Mr Dutton's written and oral submissions and a number of previous decisions put before me with some care. Having done so, I am satisfied that the Law Society also has a strong prospect of successfully arguing on appeal that they did not owe a duty of care. If so, there would be no reasonable grounds for bringing a claim and/or no reasonable prospect of establishing a claim.

6

The issue of whether or not a duty of care existed on the facts here is a discrete point of law. It can be resolved in a day's hearing. The alternative now is a 5 to 7 day trial with witnesses, in the High Court, not taking place till some time until late 2016, if not later, followed by an almost inevitable appeal to this court on the point that Mr Dutton wishes to argue now. The...

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58 cases
  • Coreix Ltd v Coretx Holdings Plc and Others
    • United Kingdom
    • Intellectual Property Enterprise Court
    • 11 July 2017
    ...that there is only a single letter difference between the marks. This prompted the Defendants to cite JW Spear & Sons Ltd v Zynga Inc [2015] F.S.R. 19, not so much for a matter of principle but to show that the mark SCRAMBLE was held not to infringe SCRABBLE even though only one letter is ......
  • Montres Breguet S.A. v Samsung Electronics Company Ltd (a company incorporated in South Korea)
    • United Kingdom
    • Chancery Division
    • 20 May 2022
    ...separate will be determined through the eyes of the average consumer. 117 As regards similarity of marks and signs, in JW Spear v Zynga [2015] FSR 19 at [60] Floyd LJ summarised the approach to take as follows: “(i) The court should assess the phonetic, visual and conceptual similarity of m......
  • Skyscape Cloud Services Ltd v Sky Plc and Others
    • United Kingdom
    • Intellectual Property Enterprise Court
    • 8 June 2016
    ...in the assessment of the likelihood of confusion; it is also a threshold requirement before infringement can be found." In J.W. Spear & Sons Ltd v Zynga, Inc [2015] EWCA Civ 290; [2015] F.S.R. 19, Floyd LJ considered the threshold requirement of similarity between mark and sign and said t......
  • Sky Plc v Skykick UK Ltd
    • United Kingdom
    • Chancery Division
    • 6 February 2018
    ...that the likelihood of confusion or association is increased because they have used that logo in a particular colour. 271 In J.W. Spear & Sons Ltd v Zynga, Inc [2015] EWCA Civ 290, [2015] FSR 19 counsel for the trade mark proprietor submitted, in reliance upon Specsavers (CJEU), that “if ......
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1 books & journal articles
  • Comparison Creep and the Conflation of Trade Mark Infringement and Passing Off
    • South Africa
    • South African Intellectual Property Law Journal No. , May 2019
    • 24 May 2019
    ...(2008) European Inte llectual Propert y Review 420 at 425. 8 [2010] EWHC 2599 (Ch).9 [2012] EWHC 1929 (Ch).10 Case C-252 /12.11 [2015] EWCA Civ 290.COMPARISON CREEP AND THE CONFLATION OF TRADE MARK INFRINGEMENT 89© Juta and Company (Pty) registered SCRA BBLE mark in association with tiles a......

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