Société Anonyme Des Bains De Mer Et Du Cercle Des Étrangers À Monaco v Anglofile International Limitedtrading as Monte Carlo Casino Entertainment
| Jurisdiction | England & Wales |
| Judge | Miss Recorder Amanda Michaels |
| Judgment Date | 11 September 2013 |
| Neutral Citation | [2013] EWPCC 38 |
| Docket Number | Case No: CC12PO0964 |
| Court | Patents County Court |
| Date | 11 September 2013 |
[2013] EWPCC 38
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
Miss Recorder Amanda Michaels
Case No: CC12PO0964
Mr David Wilkinson (solicitor advocate) of Stevens & Bolton LLP for the Claimant
Mr Alexander Hammond (company secretary of the Defendant) in person
Hearing dates: 16 & 17 July 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This is a claim for trade mark infringement and passing off and this judgment relates to the trial of liability only. For the reasons given in detail below, I dismiss the allegations of trade mark infringement and passing off and I also dismiss the counterclaim for invalidity.
The Claimant is the Société Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco ('SBM'), a company registered in Monaco, which carries on business in Monaco. SBM is the owner of the Casino de Monte-Carlo, which was founded in 1863 in Monaco. The area of land on which the casino is located was renamed 'Monte Carlo' in 1866. From 1863 onwards the Claimant has had a state monopoly in relation to the provision of casino gaming services in the Principality of Monaco. It provides such services not only at the Casino de Monte Carlo but at four other casinos in the Principality: the Casino Café de Paris, Casino La Rascasse, Monte-Carlo Bay Casino and Sun Casino. According to the Particulars of Claim, its turnover in relation to its casino services ranged from over €250 million in the financial year 2007/8, to €172 million for the latest financial year pleaded, 2010/11.
SBM's, business, however, has for many years extended far beyond casinos, to include the ownership of hotels, such as the Hôtel de Paris Monte-Carlo, Hôtel Hermitage Monte-Carlo and the Monte-Carlo Beach Hotel, and the provision of other leisure services, such as the spa Les Thermes Marins de Monte-Carlo and the Monte-Carlo Beach Spa, sports clubs such as the Monte-Carlo Golf Club, restaurants, bars and nightclubs. The evidence before me did not state when each such attraction opened, but two advertisements for 'Monte Carlo' in 1905–6 made reference to hotels, theatrical performances, the 'International Sporting Club' and opera performances, suggesting that many of the current activities have been offered for a significant period.
SBM is the registered proprietor of a large number of trade marks, including Community Trade Marks consisting of or including the words 'Monte-Carlo' as well as a large number of domain names also including the words 'Monte-Carlo' or permutations on those words. However, in these proceedings it relies upon only two of its registered marks (together 'the Registered Marks') namely:
i) Community Trade Mark No. 8395857 ('the Monte-Carlo Mark'), filed on 30 June 2009, for the words 'MONTE-CARLO' and covering the following goods:
Class 9
Computer programs and software; Casino game software.
Class 28
Playing cards, counters (discs) for games, dice, gaming tables, mats for games, slot machines.
ii) International Trade Mark (designating the EU) No 1025318 ('the Casino de Monte-Carlo Mark'), protected in the EU since 26 November 2010 for the words "CASINO DE MONTE-CARLO" and covering the following goods and services:
Class 9
Software and computer programs; casino gaming software.
Class 28
Playing cards, counters (discs) for games, dice for games, game tables, mats for games, slot machines.
Class 35
Online reservation services via an Internet commercial services portal with regard to casino gaming.
Class 41
Entertainment, providing casino facilities (gambling), providing amusement arcade services, gambling, information on entertainment and casino facilities (gambling), organization of competitions and championships for games, remote casino gaming services, providing casino gaming online on a computer network, casino gaming services accessible via a telephone network.
SBM claims to have a reputation in the UK as a result of its widespread advertising, promotion and use of the 'mark' Monte-Carlo and the Registered Marks, such that casino services marketed under and by reference to the marks Casino De Monte-Carlo and/or Monte-Carlo are expected to be the services of SBM.
In these proceedings, SBM complains of the Defendant's provision of "fun casino entertainment" under the trading name 'Monte Carlo Casino Entertainment.' The nature of the services provided by the Defendant is, broadly, to provide tables and croupiers for playing 'fun' casino games such as blackjack or roulette for the entertainment of guests at weddings, corporate events, charity fundraising events or the like. No 'real' gambling takes place, although guests may play or compete for prizes and the Defendant does not have premises at which it provides those services, but provides them wherever the event is located. SBM alleged in the Particulars of Claim that the use by the Defendant of its trading name infringes the Registered Marks and amounts to passing off. It also complained of use by the Defendant of its domain name www.montecarlocasino.co.uk and in its email addresses which include either montecarlocasino or monte_carlo_casino. In the Reply, reliance was also placed on the Defendant's Facebook page (which displays as 'Fun-Casino Monte Carlo'), its Twitter address 'montecarlo 1066' and 'montecarlocasinofuncasinohire' for its Linked in address.
The Defendant and its predecessors in business, a Mr and Mrs Hobbs, have been carrying on business under the trading name from about 1995. Mr and Mrs Hobbs had used both the trading name and the domain name now complained of, www.montecarlocasino.co.uk, which was registered in October 1999, as well as another domain name since abandoned, 'www.monte-carlo-casino.co.uk' The business was purchased by the Defendant as a going concern in October 2002. In this judgment, I refer to the trading name and the domain name (and the matching email addresses) as 'the Defendant's signs' without further distinction, unless it is necessary to do so. I deal with the additional signs complained of below.
SBM became aware of the Defendant's existence in 2006 when a 'watch notice' listed the Defendant's domain name amongst, it seems (there was no direct evidence on this point), many similar names. The unidentified person who compiled the report, which was put in evidence in a greatly redacted form, described the Defendant's domain name as for an 'organisateur de jeux de casino'. Despite that description, it seems no investigation was then made of the Defendant's business and nothing was done at that date to contact the Defendant. It was not until 17 February 2011 that a letter of claim was sent to the Defendant by SBM's solicitors, by which time both of the Registered Marks had been registered. No explanation was given to me for action being taken at that date. However, the letter stated that the Defendant's activities had recently come to SBM's attention, and referred to its claimed goodwill in the UK in the names 'Casino de Monte-Carlo' and 'Monte-Carlo' (referring to the names both with and without the hyphens) in relation to casinos. It referred to SBM's 2,000 plus domain names, and listed 'a selection' of SBM's registered marks which affect the UK, namely 23 registered CTMs and international marks including the name Monte-Carlo, 10 of which consisted only of that name. That list included both of the Registered Marks. The letter alleged infringement of all 23 marks pursuant to s 10(1) and (3) of the 1994 Act or Arts 9(1)(a) and (c) of Council Regulation 207/2009 ("the CTMR"), as well as passing off. The letter did not give the effective dates of the Marks, but most of them date from between 2007 and 2010.
The Defendant responded promptly, denying any infringement or passing off and referring to the continuous operation of the Defendant's business in the UK since 1995 and the registration of the Defendant's domain name in 1999. It claimed the right to continue using its name, suggested that SBM had acquiesced in such use and proposed entering into a co-existence agreement. Further correspondence followed, including a letter from SBM's solicitors dated 11 March 2011 in which they asserted that SBM had customers within the UK, and extensive goodwill in the UK, which predated the Defendant's business by over 130 years. That letter also referred to two additional, somewhat earlier, registered marks, in particular an international mark 'Casino De Monte-Carlo' registered in 2002, which (although this was not specified in the letter) covers services in Class 41.
The Claim Form in these proceedings was issued on 9 March 2012. Despite the references which had been made to SBM's other marks, it alleged infringement only of the two Registered Marks, pursuant to Arts. 9(1)(a), (b) and (c) of the CTMR. A defence was served in April 2012 and an amended Defence and Counterclaim was served on 25 October 2012. The Defendant has been unrepresented throughout these proceedings, and whilst Mr Hammond has clearly tried his best to identify any potential defences open to the Defendant, and has cited a number of authorities, he accepted very frankly at the trial that he had been struggling with the law. A number of case management directions were subsequently given, in the course of which a number of the pleaded defences were struck out.
At a Case Management Conference last December, it was ordered that the Statements of Case should stand as evidence in chief and permission was given for service of witness statements dealing with...
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