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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Bambino Mio Ltd v Cazitex N.V. [2008] EWHC 2796 (Ch) (13 November 2008) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2008/2796.html Cite as: [2008] EWHC 2796 (Ch) |
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CHANCERY DIVISION
Strand London WC2A 2LL |
||
B e f o r e :
(Sitting as a Judge of the High Court)
____________________
BAMBINO MIO LIMITED |
||
| Claimant | ||
| and | ||
CAZITEX N. V. | ||
| Defendant |
____________________
John Larking
Verbatim
Reporters
91 Temple Chambers 3- 7 Temple Avenue London EC4
Tel: 0207 404 7464 Fax: 0207 404 7443
MISS IONA BERKELEY (Instructed by Messrs Collyer Bristow, 4 Bedford Row, London WC1R 4DF) appeared on behalf of the Defendant.
____________________
VERSION
OF JUDGMENT
Crown Copyright ©
Thursday 14th November 2008
BAMBINO
MIO
-
v-
CAZITEX
NVTHE JUDGE:
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.
"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."
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."
"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.
"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
Kingdom."
None of this was challenged and I accept it to be so.
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.
"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."
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."
"We believe that the sign Bambineo is confusingly
similar to our client's registered Trade MarkBambino
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."
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.
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
[2006] 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
ofvisual,
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) 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;
(5) The average consumer normally perceives a Mark as a
whole and does not proceed to analyse itsvarious
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
tovary
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 andvice
![]()
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."
v
Rees Business Information
Ltd
[2004] 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.
"Forming an overall global assessment as to whether
there is likely to be a significant consumer confusion ...
is essentially avalue
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 aview
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 [2004] 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 myview,
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."
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.
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.
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 & Gamblev
The Office for the Harmonisation of the Internal Market [2002] 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."
Bambino
can be said to be descriptive of the goods I am concerned with.
"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, includingBambino
![]()
Mio
and Bambinex. The
brand name tends to be less important than the look,
feel and performance of the product. In myview,
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.
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.
view,
the lack of
visual
similarity between the Mark and the sign. Bambi Neo does not look at all like
Bambino
Mio.
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.
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.
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.
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.
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.
visually,
aurally and conceptually different. That is sufficient to dispose of this case.
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 onlyvery
slowly indeed. The quality
of our product isvery
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 ofBambino
![]()
Mio
![]()
Ltd
as a manufacturer
and supplier of reusable cotton nappies but I never
paidvery
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.
very
little evidential weight when considering the appropriate outcome.
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.
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.
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.