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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Bambino Mio Ltd v Cazitex [2009] EWCA Civ 922 (29 July 2009) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2009/922.html Cite as: [2009] EWCA Civ 922, [2010] ETMR 6 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(HIS HONOUR JUDGE PELLING)
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE PATTEN
and
SIR JOHN CHADWICK
____________________
BAMBINO MIO LTD | Appellant |
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| - and - |
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CAZITEX | Respondent |
____________________
WordWave International Limited
A Merrill Communications Company
165 Fleet Street, London EC4A 2DY
Tel No: 020 7404 1400 Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr D Alexander QC (instructed by Collyer Bristow) appeared on behalf of the Respondent.
____________________
VERSION
OF JUDGMENT
Crown Copyright ©
Sir John Chadwick:
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.
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.
Bambino"
in the first few months of 2007 were commercially insignificant and not generating a profit.
"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."
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.
"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"
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.
"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."
"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…"
visual,
aural and conceptual similarities between the mark and the sign on a global basis. He had in mind the first of the Sämann factors:
"The likelihood of confusion must be appreciated
globally taking account of all relevant factors;"
and the fourth of the Sämann factors:
"Thevisual,
aural and conceptual similarities of the Marks must, therefore, be assessed by reference to the overall impressions created by the Marks bearing in mind their distinctive and dominant components. The perception of the Mark in the mind of the average consumer plays a decisive role in the overall appreciation of the likelihood of confusion;"
visual,
aural and conceptual similarity) at paragraphs 27 to 33 of his judgment. In relation to the first he said this:
"I next turn to the degree to which the Mark and sign complained of arevisually,
aurally or conceptually similar. In my judgment, the Mark and sign are plainly
visually
dissimilar. The defendant's sign is a single word that comes from no known language and has no known meaning. The claimant's Mark, on the other hand, consists of two words not one, each of which forms part of the Italian language and has a meaning in that language."
Bambino
Mio,
but he accepted that there might be some possibility of aural similarity. Nevertheless he thought that that was outweighed by the lack of
visual
similarity.
"Contrary to what is submitted on behalf of the claimant, namely that the Mark and sign have similar conceptual meanings, I have come to a contrary conclusion. The claimant's Mark has a literal meaning ("my baby") albeit no relevant descriptive meaning. However, the defendant's word has no meaning at all."
So he took the
view
that there was simply no conceptual similarity at all.
"Thus, in my judgment, when looked at through the eyes of an average consumer of reusable nappies, having the characteristics to which I have referred, I consider that there is no realistic likelihood of confusion that the claimant and defendant's products come from the same or economically linked undertakings because on a proper analysis, the Mark and sign arevisually,
aurally and conceptually different. That is sufficient to dispose of this case."
"Appreciation of the likelihood of confusion depends upon the degree of similarity between the goods. A lesser degree of similarity between the Marks may be offset by a greater degree of similarity between the goods andvice
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versa"
value
in it as a cross-check, because the defendant's product is substantially different from the product in relation to which the claimant is currently using the mark. But that is an irrelevant factor and paragraph 35 adds nothing to the judge's conclusions.
vague,
and he returns to his conclusion in paragraph 43. He says this:
"In the result, I reject the proposition that there is a likelihood of an average purchaser of reusable nappies thinking that the claimant and the defendant's products come from the same company or from economically linked entities by reason of the alleged similarity between the Mark and the sign. In my judgment, the Mark and the sign are sufficientlyvisually,
aurally and conceptually dissimilar to prevent such confusion arising. Thus, I reject as unproved the suggestion made by the claimant that in breach of section 10(2)(b) of the 1994 Act the defendant has infringed the claimant's Mark by use of a similar sign in relation to similar goods. The claim is dismissed."
Again the judge has allowed confusion to infect the penultimate sentence of that paragraph, because the claim was not as to the use of a similar sign in relation to similar goods but as to the relation of a similar sign in relation to identical goods.
view
the answer to that is a short one. There is nothing in the judgment prior to the conclusion in paragraph 34 which indicates that the judge was proceeding on a misapprehension of law. The conclusion in paragraph 34 is expressed following a proper analysis of the similarities or lack of similarities between the mark and the sign without reference to any comparison between the claimant's actual goods and the defendant's goods.
Lord Justice Patten:
Lord Justice Jacob:
virtue
of the registration and not by
virtue
of any use that the trademark owner has made of his mark. Of course in theory there will be no confusion if the trademark owner has never actually used his mark because he has no goods out in the market. It is implicit, however, in all the tests for infringement that the trademark owner is using his mark: one assumes he is notionally fairly using his mark for all the goods for which his mark is registered. And at that point, therefore, the only question which arises is for what goods is the defendant actually using the mark? That question, if it is not for goods for which the mark is registered under s.10(3), boils down to whether or not there is a likelihood of confusion between the two marks. And in answering that question one does take into account the nature of the use made by the defendant. If the goods are sophisticated and likely to require more research so the average consumer is likely to be more circumspect, that is a relevant fact in considering whether or not there is a likelihood for confusion. That exercise is the
very exercise which this judge carried out.
I
Order: Appeal dismissed