Martin Steven Lewis v Client Connection Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Norris |
| Judgment Date | 06 July 2011 |
| Neutral Citation | [2011] EWHC 1627 (Ch) |
| Docket Number | Case No: HC10C03030 |
| Court | Chancery Division |
| Date | 06 July 2011 |
[2011] EWHC 1627 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Norris
Case No: HC10C03030
Jeremy Reed (instructed by Taylor Hampton LLP) for the Claimant
Jonathan Turner (instructed by Ultimate Law Ltd) for the Defendant
Hearing dates: 8 & 9 June 2011
The claimant, Martin Lewis, is the proprietor of two UK registered trade marks; the registered mark in each case is "Money Saving Expert" (the first filed on 2 December 2004, and the second on 9 October 2007, and both relating to "advisory services relating to financial matters provided via an internet website"). The claimant operates a website using the name "moneysavingexpert.com". The website contains advice and template letters to enable the website users to reclaim monies for (amongst other things) mis-sold payment protection insurance. The Particulars of Claim allege (and a statement of truth signed by the claimant's solicitor proves) that by September 2010 these had been downloaded by users some 967,000 times.
The Particulars of Claim also allege that the registered marks (and each of them) have a reputation in the United Kingdom. In the Defence which has been filed this allegation is admitted: but the defendant, Client Connection Limited ("CCL"), has made an application to amend its Defence to withdraw the admission. In the course of the hearing before me Counsel for CCL (Mr Turner) made clear that it was not intended to put the reputation of the registered marks in issue generally, and that it was admitted that the registered marks did have a reputation (but subject to the question of whether the registered marks were validly so registered).
CCL operates a telephone based claims management business dealing with (amongst other things) claims arising out of mis-sold payment protection insurance. Until September 2010 it operated under the name "Money Claiming Experts". The claimant says that in the course of that business it made or caused to be made telephone calls in which it held itself out as "Money Saving Expert" or was heard to describe itself as such. This is alleged to be an infringement of the claimant's registered marks.
On 15 December 2010 the claimant applied for summary judgment in his favour under CPR Part 24. Under agreed directions for the filing of evidence the claimant's evidence in support of the application was regarded as complete, CCL had the opportunity to file evidence in answer by 31 January 2011, and the claimant had the opportunity to serve evidence in reply by 14 February 2011. On 25 February 2011 CCL applied to amend its Defence and to mount a Counterclaim (the latter challenging the validity of the registration of the claimant's marks). These two applications are before me for determination.
At the outset there was a dispute as to the material by reference to which I should determine the applications. The claimant is not an expert at complying with Court orders and on 2 June 2011 (less than a week before the hearing) served evidence which was either late or for which he had no permission. CCL, however, rejected the offer of an adjournment, and said that I must decide either to admit or entirely to exclude this evidence. Having ascertained what material CCL would have wished to adduce in response to this late evidence, and that it was in fact available in court in the form of CD recordings, I decided to admit the evidence and to give permission to CCL to introduce that additional material.
I will deal first with the legal structure of the claim, then with the legal tests to be applied on the applications, and will then apply those tests to see whether judgment may properly be given having regard to the original and to the proposed amended Defence on the claims so advanced.
The legal structure of the claim is three fold.
First, there is a claim for infringement under Section 10 (1) of the Trade Marks Act 1994 (" TMA 1994"). To succeed under this head the claimant must prove that the sign used by CCL is identical with the claimant's registered marks and was used in relation to identical services. Of course, "Money Saving Expert" is visually distinct from "Money Claiming Experts". But CCL contacts its potential customers by telephone and the relevant perception of the mark is at that stage purely aural: the issue is accordingly one of aural identity. What is meant by "identity" was considered by the Court of Justice in LTJ Diffusion [2003] ETMR 83. Taking the relevant parts of paragraphs [50] and [54] of the judgment (which refer to the relevant article in the Trade Mark Harmonisation Directive 89/104) the approach is as follows:-
"The criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition of identity implies that the two elements compared should be the same in all respects.…Article 5 (1) (a) of the Directive must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer".
Second, the claimant says that there is infringement under Section 10 (2) TMA 1994. To succeed under this head the claimant must establish that CCL's sign is similar to his registered marks and is used in relation to the services which are similar to those for which the trade mark is registered, and that by reason of that circumstance there exists a likelihood of confusion on the part of the public (including the likelihood of association with the claimant's registered mark).
By reference to whom is confusion to be assessed? By reference to the average consumer who is deemed to be reasonably well informed and reasonably observant and circumspect, but taking into account the fact that such an average consumer will only rarely have the chance to make a direct comparison between the different marks, but must place his or her trust in the imperfect picture of them kept in the consumer's mind: see Lloyd Schuhfabrik [1999] ETMR 690 at paragraph [26].
By what process is the likelihood of confusion established? That question is also answered by the Lloyd Case which refers (at paragraph [18]) to the relevant case law as establishing the principle that likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case.
I have been reminded of (and bear in mind) the convenient collection of relevance considerations contained in paragraph [73] of the judgment of Arnold J in Och-Ziff v OCH Capital [2010] EWHC 2599. But however much one elaborates on the factors and refines and articulates the process of analysis to which those factors are subjected, it is wise to bear in mind the observation of Jacob LJ in Reed Executive v Reed Business Information Limited [2004] RPC 40 at paragraph 82 to the effect that:-
"Whichever approach one uses, one is essentially doing the same thing–forming an overall ("global") assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptual over-elaboration is apt to obscure this and is accordingly unhelpful".
I must, however, note that amongst those factors is the consideration that the more distinctive the registered mark then the greater will be the likelihood of confusion, so that marks with a highly distinctive character (either per se or because of the recognition they possess in the market) enjoy broader protection than marks with a less distinctive character: ( L'Oreal SA Case C-235/05 at paragraph [36]).
The third way in which the claimant advances his claim is under Section 10 (3) TMA 1994. To succeed under this head the claimant must establish that CCL has used in the course of its trade a sign which is similar to the registered marks, that the registered marks have a reputation, that the use of the sign is without due cause, and that the use takes unfair advantage of or is detrimental to the distinctive character or repute of the claimant's registered marks.
Although not spelt out in Section 10 (3) TMA 1994 there is an inherent requirement that the relevant public should make "a link" between the alleged infringing sign and the registered mark. As was explained in paragraph [36] of the judgment in L'Oreal(supra) the infringements referred to in paragraph 10 (3) TMA 1994 do not require such a degree of similarity between (a) the alleged infringing sign and (b) the registered mark with a reputation, that there exists a likelihood of confusion between them: it is sufficient for the degree of similarity between the two to have the effect that the relevant section of the public establishes "a link" between the alleged infringing sign and the registered mark with a reputation (the existence of such a link being a necessary but not of itself a sufficient condition). My attention was also drawn to paragraph [38] ff in the L'Oreal judgment which identify the relevant types of injury against which Section 10 (3) provides protection as being
(a) detriment to the distinctive character of the registered mark ("dilution" or a weakening of the registered mark's ability to identify the services as those of the proprietor of the mark): or
(b) detriment to the repute of the mark ("tarnishment" which reduces the power of attraction of the registered mark because it has a negative impact on the image of the registered mark): or
(c) taking an unfair advantage (sometimes called "free riding" or an exploitation of the reputation of the registered mark).
So much for the structure of...
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IP Snapshot: August 2011
...MARKS Martin Steven Lewis v Client Collection Limited [2011] EWHC 1627 (Ch), 6 July Martin Lewis, the founder and operator of the website moneysavingexpert.com, has been awarded summary judgment in a claim where he alleged that the defendant, Client Collection Limited ("CCL"), who ran a tel......