Case No: A3/2008/3032

Neutral Citation Number: [2009] EWCA Civ 922
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE 
CHANCERY DIVISION
(HIS HONOUR JUDGE PELLING)
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: Wednesday, 29th July 2009

Before:

LORD JUSTICE JACOB
LORD JUSTICE PATTEN 
and
SIR JOHN CHADWICK

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Between:

	BAMBINO MIO LTD	
Appellant	
	- and -		
	CAZITEX	

Respondent	

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(DAR Transcript of 
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)

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Mr A Norris and R Wyand QC (instructed by Howes Percival LLP) appeared on behalf of the Appellant.

Mr D Alexander QC (instructed by Collyer Bristow) appeared on behalf of the Respondent.
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Judgment
Sir John Chadwick:

1.	This is an appeal from an order made on 13 November 2008 by HHJ Pelling QC, sitting as a judge of the High Court in trademark proceedings.  The claimant, 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.  

2.	The defendant, 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.

3.	Nevertheless the present proceedings for infringement were commenced on 5 June 2007 claiming an injunction, delivery up or destruction of the allegedly infringing goods and an inquiry as to damages or an account of profits.  The judge observed, at paragraph 1 of his judgment, that the only substantive remedy sought at the trial was an inquiry or an account.  On the evidence of the defendant’s managing director, the sales of the defendant’s product under the name “Bambino” in the first few months of 2007 were commercially insignificant and not generating a profit.  

4.	The claim for infringement is brought under section 10(2)(b) of the Trademarks Act 1994. The section is in these terms so far as material: 
“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.”

5.	It is also common ground, first, that section 10(2)(b) of the 1994 Act gives effect to Article 5.1(b) of the EC directive No 89 of 1994 harmonising trademark law and must be construed accordingly with the Community jurisprudence and, second, that the factors to be taken into account in assessing the likelihood of confusion are conveniently and correctly summarised by Kitchin J in Julius Sämann 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.

6.	At paragraphs 17 to 34 the judge addressed a number of the factors identified by Kitchin J in Sämann.  In particular, at paragraph 17 of his judgment, the judge accepted that the evidence clearly established that the claimant had a substantial reputation and goodwill in the mark.  He observed that the claimant was a market leader in the relevant product industry and the material before him showed its product to be clearly identified and identifiable by reference to the mark.

7.	Inn paragraph 18 he went on to direct himself as to what he described as the average consumer test.  That is a reference to the second factor identified in the Sämann case, that: 

“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”

8.	The judge referred to the observations of my Lord, Jacob LJ, in Reid Executive plc 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.  

9.	The judge then examined, at paragraphs 24 and 25, such evidence as there was on that issue. As he said at paragraph 24:
“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.”

10.	He reached a conclusion on that matter at paragraph 26, where he said this: 
“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…”

11.	The judge had identified two factors: first, that the cost of purchasing a pack or set of reusable nappies was relatively high, some £200 or thereabouts, which, as he said, was a significant sum of money for most parents; but, secondly, that it was possible to purchase a trial pack for a much lesser sum than the cost of purchasing a full-term birth-to-potty pack.  He went on to say that a parent who had purchased a trial pack was even more unlikely to be confused.

12.	In paragraph 19 of his judgment the judge acknowledged the need to approach 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:

“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 of confusion;”

13.	The judge examined those matters (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 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.”

14.	He then went on to consider the aural and conceptual similarity.  He observed, at paragraph 32, that there was a fundamental difficulty in addressing the first of those issues, because there was no agreed or conventional pronunciation of the defendant’s invented word sign.  Unless one knows whether that word is pronounced Bam-bi-nay-o or Bam-bi-nee-o, it is hard to envisage the degree of confusion with 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.

15.	As to conceptual similarity he said this at paragraph 33: 
“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.

16.	He summarised his conclusions thus far at paragraph 34 of his judgment in these terms:
“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.”

17.	Nevertheless, although he thought that was sufficient to dispose of the case, he did not leave it there.  He went on, at paragraph 35, to consider a further factor, which he thought was the factor referred to in Sämann as factor 8.  It is necessary therefore to look back at what factor 8 in Sämann states: 

“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”

18.	What the judge failed to appreciate, as it seems to me, and as is common ground in this court, is that factor 8 simply does not come into play in a case where there is an identity of goods.  As I have indicated, the statutory provision speaks of goods or services identical with or similar to those for which the trademark is registered.  Factor 8 is dealing with a situation where the defendant’s product is not identical with the goods for which the trademark is registered but is similar to goods for which the trademark is registered.  In that context it is necessary to consider the degree of similarity but there cannot be degrees of identity.  There is either identity or not identity.  So the judge begins paragraph 35 on a mistaken basis, in that he simply should not be considering factor 8 at all.  Further, in a case where factor 8 is relevant (that is, in a case where the goods are similar but not identical with the goods for which the trademark is registered) factor 8 would need to be considered as part of the global appreciation.  In other words it would have needed to be considered before the judge reached the conclusion which he expressed in paragraph 34.  It may perhaps be that the judge had some appreciation of that in that he did not come to it until he had reached the conclusion in paragraph 34. 

19.	But be that as it may, paragraph 35 starts off on the wrong footing.  The judge then sets out the evidence as to the dissimilarity between the defendant’s product and the claimant’s product.  He accepts that evidence, which was not challenged, perhaps because it was appreciated that it was not really relevant in the context in which this case was being fought, and uses it as a cross-check.  He finds that there is some 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.  

20.	He completes his judgment by analysing a submission that there was evidence in the present case of actual confusion.  He finds that evidence of no assistance because it is really hearsay and too 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 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.”

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.

21.	The judge refused permission to appeal.  Permission to appeal was refused by Rimer LJ on the papers, but was granted by Mummery LJ on a renewed oral hearing.  Mr Wyand QC opened his appeal with the submission, which he described as the primary basis of the appeal, that the judge had made a fundamental error of law in relation to his failure to correctly apply the test of a global appreciation of similarity.  As it seems to me, that is not the true basis of the attack.  The true basis of the attack is the judge may not have appreciated that he was dealing with a case in which the goods were accepted as identical goods and thought he was dealing with a case in which the goods were said to be similar but not identical.  There is an indication of that in the penultimate section of paragraph 43 and it can be said to infect paragraph 35.  

22.	If the judge’s approach was fundamentally flawed because he failed to take into account a factor which he should have taken into account or took into account a factor which he should not have taken into account, then Mr Wyand says, correctly, that this court should set aside his conclusion and he urges it to reach its own conclusion on the material.  

23.	As the argument progressed, although the judge’s judgment was criticised on a number of other grounds, Mr Wyand disclaimed any attack on the grounds of perversity, so the issue comes down to the relatively narrow issue: did the judge proceed on a fundamental misapprehension of law which infected his conclusion?  In my 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.  

24.	Although the judge was clearly wrong in his reference in the penultimate sentence of paragraph 43 to similar goods, I am not persuaded that that error infected the earlier reasoning.  He was, as it seems to me, doing no more there than repeating, albeit in less precise language, the conclusion he had already reached in paragraph 34.  Nor am I persuaded that his excursion into factor 8 in paragraph 35 infects his previous reasoning.  He clearly does not rely on his analysis of factor 8 in order to reach the conclusion that he has already reached.  He wrongly thought that that could be used as a cross-check but removing any use of it as a cross-check does not flaw the reasoning which precedes it.

25.	For those reasons I am not persuaded that the judgment demonstrates the fundamental error of law which Mr Wyand needs to establish in order to persuade this court to interfere with an appreciation by a judge who clearly set out the test that he was obliged to follow and for the paragraphs leading up to his conclusion did follow that test.  I would dismiss the appeal.

Lord Justice Patten: 
26.	I agree.

Lord Justice Jacob: 
27.	I also agree. Mr Wyand accepted that he had to show that the judge had made an error of law.  The judge’s approach in comparing the two marks seems to me to be premised on the basis that the goods are identical, that is to say the defendant’s goods fall within the specification of goods of which the claimant’s mark is registered.  One can see that simply from the fact that at no point in coming to his conclusion that there is no likelihood of confusion does he take into account any difference in the goods.  One can see it also from paragraph 35, where for the first time he begins to try and consider the differences in goods.

28.	Like my Lord, I am sure that at that point the judge fell into error of law.  But he had not made any mistake up until that point. It is important in these cases of trademark infringement to remember that the right is given to the trademark owner on the basis of the goods or services for which he is registered.  One moves on from there as far as section 10(2) is concerned to similar goods and possibly for section 10(3) considerations.

29.	The right is given by 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
30.	Mr Wyand disclaimed a perversity attack as such.  Therefore all the points he made, such as the fact that the judge did not refer to imperfect recollection, simply do not arise because we are not being asked to make the assessment ourselves, unless the judge had made an error of law; which, for the reasons my Lord has given, with which I agree, he did not.

31.	I agree this appeal should be dismissed.

Order: Appeal dismissed