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||Neutral Citation Number:  EWHC 2796 (Ch)
IN THE HIGH COURT OF JUSTICE
||Royal Courts of Justice
London WC2A 2LL
||Thursday 13th November 2008
B e f o r e :
HIS HONOUR JUDGE PELLING QC
(Sitting as a Judge of the High Court)
Daily Transcript by
John Larking Verbatim Reporters
91 Temple Chambers 3- 7 Temple Avenue London EC4
Tel: 0207 404 7464 Fax: 0207 404 7443
MR ANDREW NORRIS (Instructed by Messrs Howes Percival, 1 Bede Island, Bede Business Park, Leicester LE2 7EA) appeared on behalf of the Claimant.
MISS IONA BERKELEY (Instructed by Messrs Collyer Bristow, 4 Bedford Row, London WC1R 4DF) appeared on behalf of the Defendant.
HTML VERSION OF JUDGMENT
Crown Copyright ©
Thursday 14th November 2008
BAMBINO MIO -v- CAZITEX NV
- This is the trial of a claim brought pursuant to section 10(2)(b) of the Trade Marks Act 1994 by which the claimant claims injunctive relief, an enquiry to damages and/or an account of profits, and interest. It is common ground that the allegedly infringing conduct came to an end at the latest in October 2007 and thus the only substantive remedy sought is an enquiry or an account.
- The trial took place on 10th and 11th November 2008 and I heard evidence on behalf of the claimant from Mr Shanshieff, the managing director of the claimant, and from various witnesses whose statements appear at bundle B tabs 10 to 17. In addition, the statements of the witnesses at bundle B2 to 7 were admitted and those at bundle B8 to 9 were adduced pursuant to hearsay notices. On behalf of the defendant I heard evidence from Mr Schoutetens, the managing director of the defendants; Mrs Bolton, the director and shareholder of CAS Textiles Ltd, the UK distributor of the allegedly infringing products manufactured by the defendant, and from an expert witness called Dr Heffer. There is an issue between the parties as to whether it was appropriate to call Dr Heffer. I address this issue further below. However, an order giving permission to adduce evidence from Dr Heffer was obtained from the Master and thus the attack was one which in the end was expressly limited to weight rather than admissibility.
- Originally the defendants had sought by counter claim a declaration that the registered Trade Marks relied upon by the claimant should be declared invalid and an order that they be erased from the Register of Trade Marks. However, the counter claim was abandoned by way of an amendment to the defence which was made on 13th October 2008 so the only issue I have to decide is whether the defendant has infringed the claimant's registered Trade Mark. There was a suggestion at the start of the trial that the defendant might seek to avoid liability for some of the allegedly infringing conduct relied on by asserting that the conduct was that of its distributor not that of the defendant. Happily, however, that issue was resolved by concession set out in the letter from the defendant's solicitors dated 10th November 2008, the operative part of which provided:
"In the event that your client succeeds on liability and
obtains an order for enquiries to damages and an account
of profits against our client, our client agrees that it will,
as part of that enquiry as to damages or an account of profits,
take responsibility for and pay any element of damages or
profits awarded that relates to the relevant activities of
CAS Textiles for the purposes of these proceedings.
This acknowledgement is not an admission of any kind
and as stated above, this proposal is made on purely
pragmatic grounds. Our clients reserve their position
and all their rights in relation to any costs issues that arise
from this issue in relation to these proceedings."
- Against that background I now turn to the facts, most of which are not disputed. The claimant's business is the sale and supply of reusable cotton nappy products which it now sells principally by supply to retailers in the United Kingdom and elsewhere. Since approximately May 1997 the business has been carried on using the Mark "Bambino Mio." This Mark was registered under the 1994 Act on 19th February 2003. The Mark registered consists of the words "Bambino Mio" and it was registered in respect of four classes of goods and services being "Class 03, substances of laundry use, prewash treatments for nappies, cleaning preparations, wipes impregnated with cleaning preparations, soaps; class 16, nappy liners made wholly or principally of paper or cellulose; class 21, plastic buckets, nappy buckets, buckets for soaking and/or storing nappies, parts and fittings for the aforesaid goods; class 25, nappies, swim nappies, training pants, pure cotton nappies, nappy covers, waterproof nappy covers, accessories for use with all the aforesaid goods."
- Initially most sales by the Claimant were made by mail order. However, by 2001 the emphasis had changed to the supply to retailers. At paragraph 10 in his witness statement Mr Shansheiff says this:
"Today we sell in around 65 countries around the world
through 40 exclusive distributors. Our top ten countries
for the last twelve months in terms of our sales to
distributors in these particular countries are (1) the
United Kingdom at £1.2m; (2) France £166,000;
(3) Japan £141,000; (4) Italy £125,000; (5) Australia
£85,000; (6) Czech Republic £52,000; (7) Belgium
£49,000; (8) The Netherlands £27,000; (9) Latvia
£26,000, and (10) Spain £24,000."
None of this evidence was challenged and I accept it.
- It is common ground that the claimant is a market leader in the reusable nappy market. Mr Shanshieff says at paragraphs 12 to 14 of his witness statement:
"Our turnover for the last five years has been: 2007 £2.1m;
2006 £1.6m; 2005 £1.8m; 2004 £1.6m; 2003 1.2m ... by
volume in the UK sales to the trade represent the largest
part of our business by far ... we consider ourselves to be
the market leader of reusable nappies in the United Kingdom
and a major player in Europe. We estimate we have around
20 per cent of the reusable nappy market in the United
None of this was challenged and I accept it to be so.
- The market for reusable nappies has undergone something of a renaissance in recent years, essentially for two reasons. First, the public have become more aware of the fact that the use of reusable nappies is substantially more eco-friendly than the use of disposable nappies and, secondly, because the price of reusable nappies over the period a baby will require nappies is substantially less than the cost of using disposable nappies over the same period. The claimant sells a set of nappies which it claims will be sufficient for the whole period a child will require nappies at a price of about £199. The cost to parents who use disposable nappies over the same period will exceed £1000 at current prices.
- Products for use by parents of babies are reviewed extensively and usually comparatively by specialist journals and on specialist websites. This material, some of which is in evidence before me, shows that a strong link has been established between the trade name Bambino Mio and the claimant's products - see by way of example D363. It was emphasised by Ms Berkeley on behalf of the defendant that the get up of the Mark used by the claimant emphasises the word Mio at the expense of the word Bambino because Mio is reproduced in bold, upper case letters whereas the word Bambino is represented in lower case normal text. It is also true to say that a number of the products produced by the claimant are branded by reference to the word "Mio". Thus, by way of example, the claimant produces a trial nappy product which is prominently labelled "Mio Trial" (see D213) and similarly other products are labelled "Mio Soft" (D215) and "Mio Nappy" (D219). However, it is also to be noted that each of these products is clearly marked "Bambino Mio" in at least two places on the packaging and it is equally clear in the material that I referred to earlier that it is Bambino Mio not Mio that is the distinctive Mark of the claimant's product.
- I now turn to the defendant. The defendant is a Belgian registered company. Its principal business is the manufacture of fabrics for use in the nursery trade. The fabrics manufactured include printed dyed and woven products, most of which are manufactured from natural fibres including bamboo fibre. In relation to its nappy business Mr Schoutetens said at paragraph 9 of his witness statement:
"My company's annual turnover for the year to 31st
December 2007 was €7.3m. Of this, our business
selling nappies accounted for approximately €215,000
worldwide. Our nappy business is new with first sales
being made in January 2007 and is not yet profitable.
On the expense side of the nappy business we have a full
time product manager together with advertising packaging
and stationery costs. We have spent over €200,000 to launch
the nappy business."
- The defendant, as was emphasised in part of the witness statement I have just quoted, entered the nappy market in 2006 and did so, I find, as a result of discussions between the company and Mrs Bolton. Initially Mrs Bolton sought bamboo fibre material in order to manufacture her own reusable nappies which she sold using the sign "Geobell." By the end of 2006 it was clear that the product could most effectively be manufactured by the defendant. On 23rd October 2006 the defendant appointed a Belgian based agency to design a product name and packaging concept for the defendant's reusable nappy product. Mr Schoutetens says at paragraph 21 of his statement and I accept that he did not mention at that stage any other nappy brands to the agency concerned. By 16th November 2006 the agency had come up with the name "Bambineo" which was adopted. Sometimes this word, which has no meaning in any language and is wholly made up, is used on its own, particularly in the context of domain names, but also it is used regularly in combination with the strap line "Natural bamboo softness."
- The attention of the agency was drawn to the existence of Bambino Mio. This information came to Mr Schoutetens from Mrs Bolton who mentioned it when she first saw the agency's work. However, the view was taken that the sign was sufficiently different from Bambino Mio that there was no risk of confusion and so the defendant proceeded to market its product using the name and the strap line. The use of the made up word appeared most obviously, as I have said, in the various domain names registered by or on behalf of the defendant, each of which is listed in paragraph 26 of Mr Schoutetens' witness statement. The use by the defendant of the word sign in combination with the strap line is illustrated by the materials at bundle D527 to 541. As Mr Schoutetens says at paragraph 27 of his witness statement:
"From the beginning of 2007 all the advertising and
branding that we used ourselves and provided to our
distributor, CAS Textiles, to use in the UK comprised
of the brands 'Bambineo – natural bamboo softness'
although as mentioned above our website domain names
only use the Bambineo element as does some of the
editorial writing. The branding includes a cartoon
illustration of a baby in a standard bamboo."
- In the course of his cross-examination Mr Schoutetens accepted that the Bambineo word was not only used in the domain names but also in leaflet texts, something that he had acknowledged in the text of his witness statement referred to above, and also in invoices and correspondence. He accepted, not surprisingly, that the product was referred to usually by the word Bambineo.
- The defendant's products were first delivered to CAS Textiles in January 2007. The existence of a dispute became apparent from correspondence written on behalf of the claimant by its Trade Mark agent dated 19th March 2007 (see G754). The essence of the allegation made in that correspondence was to this effect:
"We believe that the sign Bambineo is confusingly
similar to our client's registered Trade Mark Bambino
Mio. The similarity between the Marks is further
increased by the way in which you present the name,
namely as Bambi Neo. In addition, you are using or
propose to use the name Bambineo in relation to
identical and similar goods of interest to our client.
Therefore, we can only conclude that if you continue
or begin to use the name Bambineo then there will be
confusion on the part of the public, including the
likelihood of association."
- Mr Schoutetens says that for commercially pragmatic reasons he wished to resolve the dispute and with that in mind, following a consultation process with the agency who originally devised the name Bambineo, the products were re-branded using a new invented word Bambinex, used either on its own or with the strap line to which I have referred above. The claimant does not have any objection to the use of this sign. After 13th May 2007 all the Defendant's reusable nappy products were marketed using the new word sign.
- The claimant sought to suggest that allegedly infringing activity continued after 13th May 2007 because, first, some invoices issued after that date referred to the product by the old word sign and secondly because some of the nappies supplied after that date had physically sewn on to them a label using the old word. However, the invoices were not sent to potential end users of the product but as far as I can see were sent exclusively to CAS Textiles who plainly were not and could not be confused thereby. I reject this as being capable as being an infringement even if the claimant was otherwise successful in its claim. Likewise, there is no substance in the point made by reference to the labels on the nappies. It is accepted and in any event I find that the new sign appeared on all the packaging after 13th May 2007 because the old sign was covered by over labels which were stuck on to the packaging with effect from the NEC Birmingham trade exhibition that ran from 11th to 14th May 2007. It was suggested in closing submissions on behalf of the claimant that the nappy label might of itself lead to confusion if a parent were to seek to repurchase but, as I said at the time, I consider this an impossible proposition. The only relevant offers at that stage would be of products manufactured by the claimant using the Bambino Mio mark and products manufactured by the defendant using its new word sign on its packaging. Any confusion deriving from the labels on the nappies would tend to favour the claimant not the defendant if, as the defendant contends, confusion is likely to result from the use by the defendant of its old sign. Thus, even if the original word sign used by the defendant infringed the claimant's Trade Mark, the allegedly infringing conduct had ended by no later than 13th May 2007.
- I now turn to what is the real issue in this case, namely whether the defendant infringed the claimant's Trade Mark monopoly in the use of the words Bambino Mio by using the made up word sign Bambineo with or without the strap line. Section 10(2) of the 1964 Act carries into effect paragraph 5(1) of the Trade Marks Directive (No 89 of 1994). Thus, it is common ground that section 10(2) is to be construed by applying the jurisprudence of the European Court of Justice and the European Court of First Instance in relation to paragraph 5.1 of the Directive. It is common ground that the applicable principles were authoritatively summarised by Kitchin J in Julius Sämaan Ltd v Tetrosyl Ltd  ETMR 75, where at paragraph 51 he said this:
"To make good an allegation of infringement under
Article 5(1)(b) the proprietor must show that there is a
likelihood of confusion. The basic principles that must
apply in assessing the likelihood of confusion are now well
established and may be summarised as follows;
(1) The likelihood of confusion must be appreciated
globally taking account of all relevant factors;
(2) 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;
(3) In order to assess the degree of similarity between
the Marks concerned, the court must determine the degree
of visual, aural and conceptual similarity between them and,
where appropriate, evaluate the importance to be attached
to those different elements taking into account the nature
of the goods in question and the circumstances in which
they are marketed;
(4) The visual, 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
(5) The average consumer normally perceives a Mark as a
whole and does not proceed to analyse its various details;
(6) There is a greater likelihood of confusion where the
earlier Trade Mark is a highly distinctive character either
per se or because of the use that has been made of it;
(7) The average consumer rarely has the chance to make
direct comparisons between Marks and must instead rely
upon the imperfect picture of them he has kept in his mind.
Further, the average consumer's level of attention is likely
to vary according to the category of goods in question;
(8) 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 and vice versa;
(9) Mere association in the sense that the later Mark brings
the earlier Mark to mind is not sufficient for the purposes
of the assessment;
(10) The risk that the public might believe that the goods
come from the same or economically linked undertakings
does constitute a likelihood of confusion within the meaning
of the section."
- In relation to the first factor, it is to be assumed that the Mark owner, here the claimant, has a reputation and goodwill in the Mark (see Reid Executive plc v Rees Business Information Ltd  RPC 40 per Robin Jacob LJ at paragraph 79). Here, however, in my judgment, the evidence clearly establishes that the claimant has a substantial reputation and goodwill in the Mark in any event. It is a market leader in the relevant product industry and the material that I have referred to above shows its product to be clearly identified and identifiable by reference to the Mark.
- The second factor refers to an average consumer test. As Jacob LJ said in Reid at paragraph 82 this refers to a notional individual. As the judge added:
"Forming an overall global assessment as to whether
there is likely to be a significant consumer confusion ...
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. It
may be observed that both approaches guard against too
narrow a view of protection. To confuse only the careless
or stupid is not enough."
The average consumer test is one that is applied to consumers of the goods in issue, in this case reusable nappies. As Mr Geoffrey Hobbs QC, sitting as a judge of this court observed in Whirlpool Corporation v Kenwood  EWHC 1930 Ch, at paragraph 69:
"It was suggested on behalf of Kenwood that the
relevant assessment should be made by reference to
the average among all consumers in the market for all
the different types of electric beating and mixing
machines that would be covered by the Community
Trade Mark Registration in Class 7. I do not agree.
The ECJ has confirmed that it is the circumstances
characterising the allegedly infringing use which
must be considered in order to determine the question
of liability for infringement. It is necessary to conduct
a risk assessment. The tribunal must assess the likelihood
of the conduct in question giving rise to consequences
of the kind prescribed. The average consumer test
standardises the approach to assessment. It does so by
requiring the tribunal to judge the matter from the
viewpoint of the consumer exercising neither too low
or too high a degree of perspicacity. It does not permit
or require the tribunal to exclude any relevant factors
from the assessment of risk. The Artisan and KMix
are both premium priced products, targeted at design
conscious consumers. It follows, in my view, that
the question of liability for an infringement can properly
be determined by taking the presumed expectations of
such consumers into account. To hold otherwise would
be to apply a test divorced from the actualities of the case."
- The test that the court is required to apply concentrates attention on the visual, aural and conceptual similarities of the Mark and sign (see Factor 4 in the summary). However, this is to be approached on a global basis for otherwise the assessment of risk of confusion is likely to be distorted Thus aural similarities may be neutralised by conceptual or visual differences. It is an impermissible approach to conclude that because there is an aural similarity between two signs it therefore follows that there is necessarily a risk of confusion. The overall impression is the key.
- Finally, however, it is necessary to note that what has been registered here is a word Mark. Fonts, styles and get up have not been registered. Thus whilst visual differences may in an appropriate case be relevant, here it seems to me that the only significant point that derives from appearance in the Bambino Mio Mark as registered is that it consists of two words not one which come from a known language and have a conventionally recognisable meaning and the sign adopted by the defendant consists of one made up word with no conventionally recognisable meaning.
- In the course of her helpful submissions, Ms Berkeley suggested that the word Bambino was descriptive so as to engage the principle mentioned in some of the cases that the inclusion of a descriptive word means that a difference from the distinctive element of the Mark (in this case, it is submitted, the word Mio) is likely to be sufficient even if the sign otherwise has similarities with the supposedly descriptive word Bambino. I am very doubtful whether the principle relied upon by Ms Berkeley applies to this case, because I do not consider the word Bambino to be descriptive of the goods being supplied (reusable nappies). The word means, and is likely to be understood by the average consumer of the relevant product to mean, baby. Whilst in one sense babies are the users of the product, I do not think the word bambino, any more than the English word baby, can of itself be said to be descriptive of a nappy, whether reusable or otherwise.
22. Although some reliance was placed by Ms Berkeley on the decision of the European Court of Justice in Proctor & Gamble v The Office for the Harmonisation of the Internal Market  RPC 17, I consider that case to be clearly distinguishable and, if anything, emphasises the point that I have been endeavouring to make in this section of this judgment. That case concerned an application for registration as a Mark of the phrase "Baby Dry" in relation to disposable nappies. The application failed initially because it was concluded that:
"The Mark was composed only of a simple combination
of the non-distinctive words 'baby' and 'dry' and thus
consisted exclusively of an indication which might
serve in trade to designate the intended purpose of the
goods for which registration was sought, i.e., keeping
a baby dry."
Ultimately, the case reached the European Court of Justice where the appellant succeeded for the reasons which are identified in paragraph 43 and following of the judgment which in essence was to this effect:
"While each of the two words in combination may form
part of an expression used in every day speech to designate
the function of babies' nappies, their syntactically unusual
juxtaposition is not a familiar expression in the English
language, either for designating babies' nappies or for
describing their essential characteristics. Word combinations
like 'Baby Dry' cannot therefore be regarded as exhibiting
as a whole a descriptive character. They are lexical
inventions bestowing distinctive power on the Mark so
formed and may not be refused registration under
Article 7(1)(c) of Regulation 40 of 94."
- It was the use of the word "dry" and/or its combination with the word "baby" that made the point arguable at all in that case. No such combination arises here. Thus I am not persuaded that the use of the word Bambino can be said to be descriptive of the goods I am concerned with.
- I now turn to my assessment of the likelihood of confusion by reference to the principles summarised in Sämaan. 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. However, Mrs Bolton says at paragraph 11 of her witness statement as follows:
"From my personal experience with my own children
and from dealing with customers since that time, when
a parent decides to use reusable nappies rather than
disposable nappies, this is not a rushed decision but
followed from undertaking some research into the pros
and cons of both types of nappy. If the choice is reusable
nappies then some further careful thought is given to the
various options, including the different fabrics and systems
available. There are currently ten different brands that I
know of, including Bambino Mio and Bambinex. The
brand name tends to be less important than the look,
feel and performance of the product. In my view, this
makes it far less likely that someone would mistakenly
buy one brand of reusable nappy thinking it was a
different brand just because of a degree of similarity
between the brand names."
I accept this evidence. It tends to be supported by the very significant number of domain and chat room sites at which the advantages of various products are extolled and also by the substantial amount of editorial material in specialist publications on the issue as well as by the attendance of manufacturers and suppliers at mother and baby trade shows such as that held at the NEC referred to above.
- Price, it seems to me, is likely to be a factor. Whilst the cost of disposable nappies over the period a baby will require nappies is likely to be higher than the cost of purchasing a kit of reusable nappies for the reasons set out earlier in this judgment, disposable nappies are a routine purchase by parents usually on a weekly or fortnightly basis at relatively little weekly or fortnightly cost so that the total cost of nappies is spread over the relevant period that a child requires nappies. The cost of purchasing a set of reusable nappies, on the other hand, would appear to involve a one off expenditure of about £200. This is a significant sum of money for most parents. This factor leads me to think that a parent contemplating the purchase of reusable nappies is likely to carry out some research before deciding to purchase. There is some evidence of the purchase of trial packs for much lesser sums than the cost of purchasing a full term pack. This suggests that an average purchaser may experiment before reaching a final decision.
- 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 and a parent who has purchased a trial pack is even more unlikely to be confused, whether that parent is repeating the purchase because they are satisfied with the trial pack or is dissatisfied and so is seeking an alternative. I am thus required to judge the risk of confusion through the eyes of a reasonably well informed, observant and circumspect parent who, by reason of the matters I have referred to above, is likely to have carried out at least some pre-purchase research before purchasing.
- I next turn to the degree to which the Mark and sign complained of are visually, 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. Further, it is clear from the material identified by Dr Heffer that the words would be recognised as having a specific meaning by an average consumer in the UK. Although the report of Dr Heffer is criticised of being no more than a collection of material that anyone could have obtained and thus does not require a report from an expert, that criticism does not in any way devalue the conclusions that are to be drawn from the materials set out in the report.
- It was at one stage suggested that the word "Bambineo" was used as two words not one (see the letter of 19th March 2007 from the claimant's Trade Mark attorneys). I am bound to say that I have seen no evidence that this is so and it was not alleged to be so in the pleadings. However, had such been alleged then, that would merely have emphasised, in my view, the lack of visual similarity between the Mark and the sign. Bambi Neo does not look at all like Bambino Mio.
- If and to the extent that the sign includes the strap line - and both have been registered at Community level (see paragraph 26 of Mr Schoutetens' witness statement and the documents at E519 and 525) - then, in my judgment, that makes it even more visually dissimilar than Bambino Mio which does not have any strap line at all much less one which is similar to that used by the defendant. A perusal of the material shows the strap line to be used extensively on the packaging of the products. It does not appear, for obvious reasons, in domain names registered by the defendant but I simply do not accept that the average purchaser of reusable nappies would be confused even at that level for the reasons I have given.
- The claimant places significant reliance upon the fact that the first six letters of Bambino are the same as the first six letters of the defendant's invented word. So they are, but to my mind this sort of analysis leads in the opposite direction to that which the case law points; in other words, away from, not towards, a global appreciation. It ignores the fact that there is a further single letter in Bambino and two additional letters in the defendant's sign and also that the claimant's Mark contains an additional word "Mio" that is simply not present in the defendant's sign.
- I now turn to aural similarity. I bear in mind when considering this issue that aural similarity may not to be as significant a factor in the marketing and purchasing process as visual similarity where, as here, the products are sold via websites and via retailers. However, I nonetheless accept that aural similarity if established remains a relevant factor because of the effect of at least the first of the seventh Sämaan factors referred to above. It will not be possible for there to be a direct comparison between the mark and sign at all retail outlets because there may be such outlets where the Defendant's product is sold but not that of the Claimant. Similar problems might conceivably arise in relation to internet purchases. Thus aural similarity, if proved, remains a relevant factor when considering the question of infringement.
- It is submitted on behalf of the Claimant that Bambino Mio and Bamineo sound similar and thus that there is an aural similarity sufficient to give rise to a risk of confusion. There is an initial difficulty, in my judgment, about this submission because there is no agreed or conventional pronunciation of the defendant's invented word sign. In my judgment, the pronunciation of the words sound significantly different, not least because the Mark consists of two words and the defendant's sign is one word. However, even if this is wrong, I remind myself that the mere presence of a possible aural similarity is not sufficient. The overall impression is what matters. Any aural similarity, it seems to me, is on balance overcome by the lack of visual similarity as to which see above.
- I now turn to conceptual 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. If my conclusion that Bambino is not descriptive of the relevant goods is wrong, then this point becomes even more substantial. However, in my judgment, it has substance irrespective of this point. There is 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 are visually, aurally and conceptually different. That is sufficient to dispose of this case.
- There is one further factor, that referred to by Kitchin J in Sämaan as factor 8 which, though not sufficient on its own to enable a conclusion to be reached, is, nonetheless, one which suggests an outcome that is consistent with the conclusion I have reached and thus may have some value as a cross check. As Mr Schoutetens says at paragraphs 18 to 19 of his witness statement, his product is substantially different to that of the claimant's product. As he says in those paragraphs:
"The nappies that my company produces are designed
to be washed and reused for as long as the baby needs
them. Although the initial cost is higher, in the long term
they work out cheaper than disposable nappies as well
as having significant ecological advantages. The liner
which we use inside our nappies is wholly biodegradable.
This means that it has a negligible effect on waste in
landfill. By contrast, a huge proportion of waste in land-
fill is taken up with disposable nappies which do not
biodegrade at all or only very slowly indeed. The quality
of our product is very high. We have deliberately chosen
expensive materials and expensive manufacturing processes
in order to maintain the highest quality. Bamboo fibre is
at least 60 per cent more expensive than cotton. The
manufacturing process for our nappies is expensive.
The seams are tripled stitched and special silicone
elastic is used in the stretch sections of the nappy.
The consequence is that this product with withstand
repeated washing at up to 90 degrees Centigrade.
It remains soft and continues to form an effective seal
against leaks. In my opinion, bamboo fibre nappies
offer much more comfort and have a better performance
than the cotton reusable nappies such as the ones sold
by the claimant."
As Mrs Bolton says at paragraph 12 of her statement:
"I was aware of Bambino Mio Ltd as a manufacturer
and supplier of reusable cotton nappies but I never
paid very much attention to them. This is because
their product is radically different from our shaped
bamboo fibre product and personally I did not like it.
I certainly never regarded them and still do not regard
them as a direct competitor for our bamboo fibre nappy
product. There are other products sold by other businesses
such as Top Box which do directly compete with the
Bambinex natural bamboo softness nappies."
I accept this evidence, which was not challenged.
- In his closing submissions, counsel for the claimant asserted that there was actual evidence of confusion in this case. Clearly if such evidence was available it is necessary that it be considered before reaching a final conclusion since at least potentially it could provide a clear answer to the questions that have to be answered in his case.
- Reliance is placed first on the fact that Mrs Bolton referred to the existence of the claimant when first she saw the sign that the defendant proposed to use. That is not evidence of confusion in my judgment for it was not suggested either by or to her that she was confused. It is evidence of commercial caution. The key point is that having considered the point, she concluded that there was no risk of likely confusion. Thus, it seems to me that this initial point has very little evidential weight when considering the appropriate outcome.
- Next some reliance is placed on (a) some material obtained from eBay, (b) one product review obtained, as I understand it, from an internet search and (c) some chat room exchanges on one particular chat room devoted, as I understand it, to the interests of nursing and expectant mothers. This material has all been adduced under the cover of hearsay notices. No attempt has been made to call any of the people involved so it is not possible to explore with the people concerned the degree to which they were confused or to establish the degree to which they were average purchasers of the relevant sort. Further, the material is isolated. It does not and could not demonstrate the position of the average consumer of the goods in issue. For this reason I consider it much the sounder approach to identify the attributes of the notional average purchaser and then test the degree to which such a person was likely to be confused by reference to the objective evidence available rather than to attempt to extrapolate whether such confusion could exist from the material I am now considering.
- As to the entry on eBay I am unclear as to whether this reflects confusion as opposed to error. The entry at page 5 does suggest a degree of confusion in the mind of the seller but it is not clear whether that confusion is caused by similarity between the Mark and sign. It does not demonstrate potential confusion by an average purchaser.
- Next, reliance is placed on apparent confusion in the product review, a copy of which appears in bundle F at tab 2. I am not persuaded that the isolated reference to Bambino Mio is not a simple typing error. Read as a whole, the material clearly refers to the defendant's product. I am not persuaded that the document shows confusion much less confusion by an average purchaser caused by reason of a comparison of the sign and the Mark. It is a single document found on the internet. There is no evidence as to when, how or by whom it was created. It does not assist, in my judgment.
- Finally, reference is made by the claimant to a chat room print out. The chat room exchanges are not by definition representative. Whilst they show confusion by one mother who describes herself as "Pink Ranger", they show an absence of confusion in the minds of two others who describe themselves respectively as "Nappy Zone" and "Accessorise". I do not see what can be gained from this material that assists in the exercise that I am required to undertake.
- The final point I should mention concerns the report of Dr Heffer. This was, as I have said, criticised as being something that should not have been adduced and this was essentially because much, if not all, of the material could have been obtained from publicly available sources. I accept that point as far as it goes but I consider the reliance placed on Esure  EWCA civ 842, to be misplaced because here this expert does not profess to give expert evidence on the ultimate issue which was the nature of the complaint which gave rise to the criticism in the Esure case. It is convenient to have all the relevant material gathered together in one place. It is unlikely that all the material could have been collected by someone unless that person was familiar with the material. I do not consider the material to be without value. To the contrary, I have concluded that some of it is relevant to the issues I have decided in this judgment by express reference to the report.
- 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 sufficiently visually, 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.
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