![]() |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] [DONATE] | |||||||||
England and Wales Court of Appeal (Civil Division) Decisions |
||||||||||
PLEASE SUPPORT BAILII & FREE ACCESS TO LAW
To maintain its current level of service, BAILII urgently needs the support of its users.
Since you use the site, please consider making a donation to celebrate BAILII's 25 years of providing free access to law. No contribution is too small. If every visitor this month gives just £5, it will have a significant impact on BAILII's ability to continue providing this vital service.
Thank you for your support! | ||||||||||
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> esure Insurance Ltd v Direct Line Insurance Plc [2008] EWCA Civ 842 (23 July 2008) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2008/842.html Cite as: [2008] EWCA Civ 842, [2009] Bus LR 438 |
[New search] [Printable RTF version] [Buy ICLR report: [2009] Bus LR 438] [Help]
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
(CHANCERY DIVISION)
LINDSAY J
Strand, London, WC2A 2LL |
||
B e f o r e :
LORD JUSTICE JACOB
and
LORD JUSTICE MAURICE KAY
____________________
esure Insurance Limited |
Appellant |
|
- and - |
||
Direct Line Insurance Plc |
Respondent |
____________________
WordWave International Limited
A Merrill Communications Company
190 Fleet Street, London EC4A 2AG
Tel No: 020 7404 1400, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr Geoffrey Hobbs QC & Mr Guy Hollingworth (instructed by Linklaters Llp) for the Respondent
Hearing dates : 3-4 April 2008
____________________
Crown Copyright ©
Lady Justice Arden:
"(2) A trade mark shall not be registered if because
(a)…
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with that or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which-
(a) is identical with or similar to an earlier trade mark, …
(b) [repealed]
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."
Relevant provisions of the trade mark directive
"(1) A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a) …
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark.
(4) Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;…"
"(1) The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.
(2) Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
The hearing officer's decision
Judgment of the judge
"Splitting the marks down into their respective visual, aural and conceptual elements, I find there to have been no aural similarities and that the visual differences (even if one considers the mouse on wheels being in red or in red with black wheels) as to be so clear and so readily assessable as differences by an average consumer that such a person would not take the respective proprietors of them to be one and the same or, indeed, as economically related to one another but rather that they were more likely to be rivals in one and the same service industry. As for the conceptual element, that, as it seems to me, only goes to support that view; the idea behind the one is that business can be done direct with the provider by telephone, of the other by on-line communication. They are likely to be perceived as alternatives. The conceptual element serves to bolster the difference which the visual element suggests." (J[109])
"[124] I should add this: there is no necessary inconsistency between, on the one hand, my holding, when freed from respect for the Hearing Officer's decision, that the public would not regard Direct Line and esure to be one and the same or economically related but rather would be more likely to see them as rivals and, on the other, my upholding the Hearing Officer's decision that were the mouse on wheels to be used as a mark there would, in the public's mind, be taken to be such a link between the two that use of the mouse would be parasitic and unfair. In the former case I am free, for reasons I have given, to decide as I would have done on the evidence; in the latter and in the absence, as I have held, of error of principle, I am constrained so that what would have been my decision on the evidence is completely irrelevant."
The evidence of Mr Blackett
"Confusion
It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business. The use by esure of an object of a similar oblong, block-like shape, also on chunky wheels – which up to this time have been the 'property' of Direct Line – would lead a significant number of the public to think that the esure mouse on wheels was somehow connected with Direct Line, particularly as both companies are involved in insurance. The fact that the esure mouse on wheels is also a desk top object could increase the confusion which I believe will arise. Confusion is especially likely to arise in the case of the esure mouse on wheels if used in the colour red, as at appendix 4 ("the red esure mouse on wheels"), as the colour red has also in my view become the 'property' of Direct Line and a major component of the Direct Line Telephone Device. It is not uncommon for companies to extend their brands to embrace new products and services using their well established brand device, or create similar devices as a 'family' of related devices. It is my opinion that the use by anyone, including esure, of a device similar to the Direct Line Telephone Device, such as the esure mouse on wheels, would cause confusion among members of the public."
"41. I would expect this to have a negative impact on Direct Line's sales. In a market where the consumer has direct contact with the supplier, the ability of the brand to stand out is of the utmost importance. If consumers see other suppliers imitating the hitherto unique features of Direct Line's brand then their faith in what makes Direct Line special and different is likely to be weakened.
42. Mr. Graham denies having any wish to ride on Direct Line's coat-tails. Again, whether esure wants it or not, in my view, esure will obtain considerable benefits from adopting its mouse-on-wheels logo. The great benefit to esure is that it can take advantage of the familiarity and prestige that Direct Line has built up over the years in its telephone-on-wheels brand.
43. Direct Line will have set certain standards in service quality and value and these will inevitably be symbolised for consumers by Direct Line's powerful brand identity, of which the telephone-on-wheels is a key component. By dint of association, consumers will expect comparable standards of service and value from esure if it associates esure with Direct Line via its mouse-on-wheels. esure would without doubt benefit from the reputation and positive imagery that Direct Line has established under its brand.
44. Direct Line's reputation will have been achieved at considerable expense on the part of the company. It would, in my opinion, be unfair to allow esure to capitalise on this.
45. esure's use of a mouse-on-wheels could also open the door to other suppliers of insurance to use other commonplace desktop objects – for example laptop computers or handheld communication devices like mobile telephones or the Blackberry – on wheels as branding devices. This danger is illustrated by esure's attempt (now dropped, for whatever reason) to register a series of mainly computer related desktop objects on wheels. I would expect it to be harder for Direct Line to prevent further 'family likeness' applications such as these if it were no longer the unique user of a desktop device on wheels. In my view, the registration of the mouse-on-wheels by esure may restrict Direct Line's future development of its brand."
Grounds of appeal
Submissions
esure
i) The question of similarity of marks is a distinct issue from the global appreciation of the likelihood of confusion.
ii) The marks are to be compared as a whole when determining similarity. The distinctiveness of the marks or the elements in them are not relevant to that comparison because distinctive character is not a factor which influences the perception of the consumers to the similarity of marks.
iii) Distinctive character is relevant to the likelihood of confusion. If a mark is a complex one, it is necessary to consider whether any element of the mark dominates.
Direct Line
Conclusions
"Permission to appeal may be given only where—
(a) the court considers that the appeal would have a real prospect of success; or
(b) there is some other compelling reason why the appeal should be heard."
"The Court of Appeal will not give permission unless it considers that:
(a) the appeal would raise an important point of principle or practice; or
(b) there is some other compelling reason for the Court of Appeal to hear it."
"The perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (see SABEL, paragraph 23, Lloyd Schuhfabrik Meyer, paragraph 25, and the order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 29)." (L'Oreal SA v OHIM Case C-235-05 at [41])
"46. In addition, it should be noted that the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but that such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (see order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 32)."
"26. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (see, to that effect, Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 31). However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question.
27. In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed."
"114. In my view, a distinctive feature of both marks is the unusual juxtaposition of wheels attached to (albeit recognisably different) electronic communication devices. I find that this gives rise to a recognisable similarity between the marks. Consequently, unlike the CFI's factual findings in the Vedial case, I do not accept that the presence of such a common feature in these marks gives rise to no similarity between them. The answer to the question of whether there is sufficient similarity between the marks depends on whether the applicant's mark is liable to have the effects in section 5(2) and/or 5(3)."
"My Lords, where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused… But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question". By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced, but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.
The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself."
"In this case, the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing off claim… On the other hand, the hearing officer did not hear any oral evidence. In such circumstances, an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle."
Disposition
Lord Justice Jacob:
a) The Direct Line red telephone with its black wheels was very very well-known;
b) Direct Line's business was directly with the public, taking business by telephone;
c) Doing direct business by way of the internet as an alternative to the telephone was well on the way in;
d) The proposed registration would include a red mouse with black wheels.
In my capacity as an expert on branding I think the Direct Line Telephone Device is both striking and original.
It is my opinion that the Direct Line Telephone Device is now very well known and has achieved iconic status.
Well you do not need an "expert" to tell you any of that. The facts speak for themselves. And if that had not been so, then an assertion to the contrary would have been wrong.
It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business.
"It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business. The use by esure of an object of a similar oblong, block-like shape, also on chunky wheels – which up to this time have been the 'property' of Direct Line – would lead a significant number of the public to think that the esure mouse on wheels was some how connected with Direct Line, particularly as both companies are involved in insurance. The fact that the esure mouse on wheels is also a desk top object could increase the confusion which I believe will arise. Confusion is especially likely to arise in the case of the esure mouse on wheels if used in the colour red, as at appendix 4 ("the red esure mouse on wheels"), as the colour red has also in my view become the 'property' of Direct Line and a major component of the Direct Line Telephone Device. It is not uncommon for companies to extend their brands to embrace new products and services using their well established brand device, or create similar devices as a 'family' of related devices. It is my opinion that the use by anyone, including esure, of a device similar to the Direct Line Telephone Device, such as the esure mouse on wheels, would cause confusion among members of the public."
[13] But it also is permissible for an expert witness to opine on an "ultimate question" which is not one of law. I so held in Routestone Ltd v Minories Finance Ltd [1997] BCC 180 and see s.3 of the Civil Evidence Act 1972.
[14] But just because the opinion is admissible, it by no means follows that the court must follow it. On its own (unless uncontested) it would be 'a mere bit of empty rhetoric' Wigmore, Evidence (Chadbourn rev) para.1920. What really matters in most cases is the reasons given for the opinion. As a practical matter a well-constructed expert's report containing opinion evidence sets out the opinion and the reasons for it. If the reasons stand up the opinion does, if not, not.
Lord Justice Maurice Kay:
"… expert evidence is admissible under section 3 of the Civil Evidence Act 1972 in any case where the Court accepts that there exists a recognised expertise governed by recognised standards and rules of conduct capable of influencing the Court's decision on any of the issues which it has to decide and the witness to be called satisfies the Court that he has a sufficient familiarity with and knowledge of the expertise in question to render his opinion potentially of value in resolving any of those issues. Evidence meeting this test can still be excluded by the Court if the Court takes the view that calling it will not be helpful to the Court in resolving any issue in the case justly. Such evidence will not be helpful where the issue to be decided is one of law or is otherwise one on which the Court is able to come to a fully informed decision without hearing such evidence."
It seems to me that, on any view, the evidence of Mr Blackett on confusion, viewed from the standpoint of the average consumer, does not reach the level of expert evidence as there explained.
"An expert is only qualified to give evidence on a relevant matter if his knowledge and expertise relate to a matter which is outside the knowledge and experience of a layman …
We do not have trial by expert in this country: we have trial by judge. In my judgment, the expert witnesses contributed nothing to the trial in this case except expense …
There has been a regrettable tendency in recent years in personal injury cases … for parties to enlist the services of experts whether they are necessary or not."
That was said before the Civil Procedure Rules. It was directed at encouraging a sceptical approach to the taxation of costs when a proffered expert had given evidence which did not go outside the knowledge and experience of a layman or a trial judge. It had an immediate effect on the extent to which, and the purposes for which, witnesses such as accident investigators were used. It is to be hoped that this case will have a similar effect as regards the evidence of branding consultants and the like on the issue of confusion from the standpoint of the average consumer.