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Cite as: [2016] EWHC 75 (IPEC)

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Neutral Citation Number: [2016] EWHC 75 (IPEC)
Claim No: IP14M03816

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT

Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
20 January 2016

B e f o r e :

Miss Amanda Michaels
sitting as a Deputy Enterprise Judge

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GAMA HEALTHCARE LIMITED Claimant
- and –
PAL INTERNATIONAL LIMITED Defendant

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Mr Martin Howe QC (instructed by Kuit Steinart Levy LLP) for the Claimant
Mr Roger Wyand QC and Mr Thomas Elias (instructed by Spearing Waite LLP) for the Defendant.
Hearing dates: 3rd and 4th December 2015

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HTML VERSION OF JUDGMENT
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Crown Copyright ©

    Deputy Enterprise Judge Michaels:

    Introduction

  1. The parties to this passing off action are both in the business of the manufacture and supply of clinical wet wipes for use in the healthcare industry. The Claimant, Gama Healthcare Ltd, manufactures and sells wipes using the trade name "Clinell" whilst the Defendant, Pal International Ltd, sells its wipes under the trade name "Medipal." This claim for passing off is based upon the get-up of the Clinell products. It is alleged that the get-up adopted by the Defendant for its own disinfectant and detergent wet wipes is so similar to the Claimant's packaging that it is likely to lead members of the relevant trade to believe that the Defendant's wipes are those of the Claimant or connected with the Claimant.
  2. The Claimant sells a range of wet wipes which are supplied in tubs and in plastic flow wraps (soft, rectangular packets with a resealable flap on the front through which the wipes are dispensed). The pleaded claim relates only to the flow wrap packaging for two different kinds of wipes, with common design features ("the Claimant's Packaging") identified as follows in the Particulars of Claim:
  3. a. Different colours are used for different types of wipes: green packaging is used for disinfectant wipes and yellow packaging for detergent wipes. Reference was also made in the Particulars of Claim to red packaging for sporicidal wipes, but no claim was not pursued in relation to such wipes. I do not know why.
    b. "In each case the colour scheme of the front of the Claimant's Packaging is such that the lower area is the appropriate product colour and the upper area is white. The two colour blocks are separated by a horizontal curved line."

    The description of the get-up was thus at a fairly high level of generality.

  4. No claim was made that the Claimant was entitled to claim a monopoly in the use of colours as such, nor in "colour-coded packaging per se." The exact shades of colour used were not identified in the Particulars of Claim. Instead, the Claimant relied upon the shades of green and yellow shown in the photographs at Annex 1 to the Particulars of Claim (similar photographs are annexed to this judgment). Two Pantone shades used were later identified, on a confidential basis, in the Reply. In fact, that did not complete the picture, as the Claimant uses different Pantone shades of green and (it seems) yellow, for its standard and maceratable disinfectant wipes respectively. The importance of the shades of green/yellow was reflected in the terms of the injunction claimed, seeking to restrain the Defendant from using a number of Pantone colours, although the injunction did not cover either of the green Pantone shades used by the Claimant.
  5. The goodwill claimed nevertheless lay in the use of those colours in combination with the colour block design for the front of the Packaging described at (b) above. The proportion of the front of the pack which was to be coloured was not specified, and no part of the Packaging was relied upon apart from the front of the package, on the pleaded basis that the front of the package is the critical aspect that will most commonly be viewed by the public.
  6. During the course of the trial Mr Howe QC, who appeared for the Claimant, confirmed that the claim related only to the sale of clinical wipes in flow wrap packaging of the kind described. No claim was made in relation to colours "divorced from context" nor as to the Defendant's sale of the same wipes in tubs of various shapes and sizes although they use the same colour of green, combined with white, as the Defendant's flow packs. The Claimant's case was further limited by the express disclaimer of any objection to an earlier version of the Defendant's packaging (Medipal Phase 2, discussed below) even though the Particulars of Claim seemed to complain of that version. Mr Howe QC also indicated that the terms of the injunction which the Claimant would seek were narrower than as set out in the prayer to the Particulars of Claim, so that the Claimant sought to prevent the Defendant from selling wipes in packaging which was the same as or confusingly similar to the Defendant's Phase 3 or 4 Packaging. The original claim for an injunction against the use of wipes in packaging using a list of Pantone colours was abandoned.
  7. The Defendant denied passing off. It denied that the Claimant had goodwill in its get-up, claiming in particular that the colour coding of the packaging was standard in the industry, so the colours lacked distinctiveness. It also denied that any misrepresentation would occur in relation to the majority of sales, which are made to the NHS after careful evaluation of the goods, and where orders are placed by reference to product names or codes, rather than by reference to packaging. The Defendant also relied on the impact of the parties' trade names on their respective Packaging.
  8. The witnesses

  9. Dr Guy Braverman is the managing director and co-founder of the Claimant and gave evidence as to the development of its products and of the Claimant's Packaging, the marketing efforts made by the Claimant, the training provided to healthcare professionals and his concerns about the Defendant's products. Dr Braverman was a straightforward witness. I also heard evidence from Mr Nigel Watson who is the Senior Trading Manager for Healthline Medical Ltd, but previously worked for many years for the NHS Supply Chain and its predecessor organisations. He was an extremely knowledgeable witness but I had some concerns about some of his evidence, as I explain below.
  10. Sarah Ewart is employed by the Claimant as a Sales Executive, and previously worked for one of its competitors, Vernacare. Pixy Strazds is a nurse practitioner for Infection Prevention and Control who works for Nottinghamshire Healthcare Foundation NHS Trust. Rosemary Dixon is also a nurse working in Infection Control; she works for the Sherwood Forest Hospitals NHS Foundation Trust. Jean Law is also a nurse specialising in Infection Control, who now works for the Claimant to assist with training. I found all of these ladies to be straightforward witnesses and I discuss their evidence below.
  11. The Defendant called only two witnesses, Mr Alexander Brucciani, the managing director of the Defendant and Nadine Bellamy-Thomas who is the healthcare business manager of the Defendant. I discuss the reliability of Mr Brucciani's evidence below. Ms Bellamy-Thomas was reluctant to accept that the green used on the Defendant's disinfectant wipes was very similar to that used by the Claimant, but otherwise appeared to me to be a straightforward and frank witness.
  12. I should add that a number of the Claimant's witnesses expressed an opinion as to the likelihood of confusion and deception arising from use of the Defendant's Packaging. Counsel agreed that this was a matter for me and that I should ignore those parts of the witness statements. I have done so.
  13. The factual background

  14. The Claimant company was founded in 2004 by two medical doctors, Dr Braverman and Dr Allen Hanouka. It developed a universal, disinfectant wipe, so called because it has both disinfectant and detergent properties and may be used as a hand wipe as well as on surfaces and equipment. The wipe was intended for use in the healthcare industry and was first sold to the NHS in 2006. A wider range of wipes was then developed and sold by the Claimant. The detergent wipes in issue were launched in September 2007. The claim pursued against the Defendant to trial related only to the disinfectant wipes sold in green/white Packaging and detergent wipes sold in yellow/white Packaging of the design described above.
  15. These proceedings were issued on 26 September 2014. By about 2014, over £5.8 million of the Claimant's disinfectant wipes were being sold annually, primarily to the NHS, and the Claimant had for some years (possibly since about 2008) been the market leader for the sale of such wipes to the NHS in England. The Claimant's evidence was that it spent over £500,000 in the 3 years to March 2014 in marketing the Clinell wipes. The selection of advertising materials and merchandise in evidence showed the range of colours used; some but not all of such documents pre-dated September 2013 (the relevant date for the assessment of passing off, see paragraph 28 below).
  16. The Claimant provided training to NHS staff in the use of Clinell wipes, which emphasised that the colour of the packaging indicated the type of wipe. Dr Braverman gave evidence of the investment made by the Claimant in its training programmes, although all of the figures he gave related to periods after the relevant date. However, it is clear that the Claimant had previously carried out similar staff training, which Dr Braverman described as ingrained into the business. His evidence was that clinical staff are trained to identify the colours and appearance of the Claimant's Packaging with the individual products in the range and that NHS staff may refer to the disinfectant wipes as "green Clinell." Mrs Dixon, another witness for the Claimant however said that the wipes are commonly referred to just as "Clinell wipes." The Claimant alleged that as a result of the significant sales of its products, the efforts made to promote them since 2007, and its training programmes, the get-up of its Packaging had become distinctive.
  17. The great majority of the Claimant's sales are and were effected through an organisation called the NHS Supply Chain, an agency of the Business Services Authority managed by DHL, which supplies some 80% of all wipes used in the NHS. Sales to the NHS were also made through other companies. The Claimant also makes some sales to specialist resellers who supply other areas of the healthcare industry, such as GP and dental surgeries. The Claimant's wipes are also available on other websites, including Amazon, and so could be sold to the general public. Dr Braverman thought that the Claimant sold a few thousand packs a year of each of its lines through such non-specialist sites, which at £2 per pack wholesale is plainly a very small fraction of its overall sales of over £5 million p.a. (also wholesale) and still only a fraction of the Claimant's sales outside NHS Trusts.
  18. The Defendant company is a long-established business in the food sector and was a manufacturer of hygiene work wear. It started selling healthcare wipes in the Middle East in 2000 and in 2005 started manufacturing such wipes on a 'white-label' basis for other brands. Mr Alexander Brucciani became the managing director of the Defendant in 2011 and decided to expand its business in the healthcare market in the UK by developing its own brand of healthcare wet wipes. He chose the name "Medipal" for this new range of products.
  19. Mr Brucciani explained that in about 2011 he carried out a lot of research into healthcare wipes, including on the NHS Supply Chain website, and became aware that the Claimant was one of the biggest suppliers in England. Research was carried out into the pricing of existing products sold by the Claimant and others such as PDI and Vernacare. Mr Brucciani looked at the packaging used by the various suppliers at that stage and his evidence was that he saw that many of them, including the market leaders, used a standard colour coding for the wipes: green for disinfectant wipes and yellow for detergent wipes.
  20. The first designs of packaging developed for the Defendant were produced in-house in May-June 2011, and at that stage Pantone 116C yellow and white was chosen for the detergent wipe labels. Mr Brucciani chose to use blue and white for the disinfectant wipes, as that was the colour used for the Defendant's food sector disinfectant wipes. The products were at that stage intended to be sold in tubs, which were predominantly white, with a broadly triangular "swoosh" of the appropriate colour on the lower left hand corner of the pack.
  21. The Defendant's Phase 2 packaging was produced in about May 2012 and was again designed in-house. At that point, Mr Brucciani decided to use flow-wrap packets, and to use green instead of blue for the disinfectant wipes. Packs made to the Phase 2 designs were displayed at an exhibition in early October 2012 but were never formally released onto the market. A few sample packs were later found to have been sold by distributors. Essentially, the packaging was not commercialised and did not come to the Claimant's attention at the time. In 2012 the Defendant saw PDI as the market leader, equalled or closely followed by the Claimant. It took the opportunity at the exhibition to assess its competitors' stands, marketing and offerings. At that stage, the Defendant was also working on a tender hoping to have its wipes included in the NHS Supply Chain Catalogue.
  22. During 2013, further work was done on marketing the Defendant's healthcare products and professional designers were brought in to redesign the Defendant's logo, branding and packaging. This resulted in the development of the Phase 3 packaging which was used to sell the Defendant's wipes from about September 2013, and the Phase 4 packaging which was introduced in around June 2014 and is the current Packaging.
  23. As shown in the Annex to this judgment, the Phase 2 flow pack for the disinfectant wipes was similar to the Phase 3 and 4 disinfectant packs about which the Claimant complains in several respects:
  24. a. The bottom 2/3 of the front of the pack was green, and the top 1/3 white;
    b. The flap over the opening was white, with "Disinfectant Wipes" written on it in green; and
    c. The name "medipal" appeared on the top left hand side of the front of the pack. It is also printed prominently along both long sides of the pack.

  25. However, there were design changes in the Phase 3 and 4 packaging. The most striking change, and the most important from the Claimant's point of view, was in the shade of green used. It was the Defendant's case that it intended to use the same shade of green (namely Pantone 354C) for Phases 2, 3 and 4, but the Phase 2 packs as manufactured turned out a different shade of green to the later packs; it was a brighter, lighter, grassy shade of green. The green of the Phase 3 and 4 Packaging is much closer to the colour used for the Claimant's Packaging. In addition, the Phase 3 version emphasised and increased the curve of the dividing line between the green and white parts of the pack, and added a black line along the bottom of the pack and a green "swoosh" at the top right of the pack, with a small Union Jack flag on it. The font used on the Phase 3 and 4 versions was also changed to the standard font Helvetica, presenting the name Medipal in a less elongated form, and with an initial capital letter, but still upon the sides of the packs as well as on the front. The Phase 4 packaging then removed the Union Jack and reduced the size of the green swoosh at the top-right of the pack, in my view significantly increasing the proportion of white on the front.
  26. Phase 2 packs were also produced for the detergent wipes, in a matching yellow design. The later Phases of the designs were changed in the same way as the disinfectant wipes. The yellow shade for each of Phases 2, 3 and 4 was Pantone 116C. Again, the colour turned out incorrectly on the Phase 2 packs – the colour then appeared closer to the standard yellow used by the Claimant than it does on the Phase 3 and 4 packs, where the Defendant's yellow is darker, more mustard than lemon yellow.
  27. The Defendant's disinfectant wipes were accepted for sale in England through the NHS Supply Chain catalogue in April 2013. The detergent wipes are not in that catalogue and the Defendant sells significantly fewer of them. Both kinds of wipe are sold to healthcare customers through specialised distributors and websites; they are not intended for use by members of the general public. Following acceptance into the catalogue, the Defendant started to manufacture, advertise and market its wipes. Ms Bellamy-Thomas explained that marketing efforts were made with both the infection control departments and the procurement departments of NHS Trusts, with a view to building up awareness of the products and a market for them. Mr Brucciani said that sales to non-NHS customers, such as GPs and care homes, are very low, and are not a priority for the Defendant. When sales are made to NHS Trusts, the Defendant offers staff training in the use of its wipes, and Ms Bellamy-Thomas explained that when sales are made to the Defendant's specialist distributors, they too are trained by the Defendant and in turn offer training to end users.
  28. On 7 November 2013, the Claimant's solicitors wrote to the Defendant complaining of passing off by use of the Phase 3 Packaging. The Defendant's trade mark attorneys wrote back on 29 November denying passing off very much on the same basis as pleaded in the Defence. After some further exchanges in December 2013, it appears that the correspondence ceased.
  29. The Defendant made some further changes to its packaging designs in early 2014, described above. The changes were, in my view, minor. Despite the complaints made by the Claimant, the Defendant did not take the opportunity when amending its Packaging at that point to seek to distance its get-up from that of the Claimant's Packaging. Mr Brucciani saw no need to do so.
  30. The Claimant wrote again complaining that the changes to the Phase 4 Packaging exacerbated the misrepresentation previously identified. These proceedings followed.
  31. The Law

  32. There was no dispute as to the essence of a claim for passing off, as summarised by Lord Oliver in Reckitt & Colman Products Ltd v Borden Inc (No.3) the Jif Lemon case, [1990] 1 WLR 491 at p. 499:
  33. "The law of passing off can be summarised in one short general proposition—no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of purchasing public by association with the identifying "get-up" … such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant … (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods and services the plaintiff. … Thirdly, he must demonstrate that he suffers … damage …"

    I am not, in this judgment, asked to decide any issue about damage, as the Defendant conceded at the case management conference that if the Claimant succeeded in proving goodwill and misrepresentation, the Defendant would agree that such misrepresentation had caused at least token damage.

  34. The relevant date for establishing whether the Claimant had the necessary goodwill to support its passing off action is the date when the Defendant commenced the activities complained of (see Cadbury-Schweppes v Pub Squash Co [1981] 1 WLR 193). The relevant date was therefore September 2013, when the Defendant first began to sell wipes in its Phase 3 packaging.
  35. It is not easy to establish passing off where the allegedly distinctive indicia consist only of get-up, and the parties' products bear distinctive names. This was demonstrated in Schweppes Ltd v Gibbens (1905) 22 RPC 601. The parties' goods were sold in similarly embossed bottles bearing labels of very similar shape, design and colour scheme, and wording in a similar layout and font. However, they respectively bore the distinctively different brand names "SCHWEPPES" and "GIBBENS" prominently on the label. Lord Halsbury L.C. held at pp.606-7:
  36. "The question that we have to determine is whether in selling the bottle a person is likely to be deceived by the resemblance of the one thing to the other; and if a person is so careless that he does not look, and does not, … "treat the label fairly," but takes the bottle without sufficient consideration and without reading what is written very plainly indeed upon the face of the label on which the trader has placed his own name, then you certainly cannot say he is deceived—in fact he does not care which it is. …
    The whole question in these cases is whether the thing—taken in its entirety, looking at the whole thing—is such that in the ordinary course of things a person with a reasonable apprehension and with proper eyesight would be deceived."
  37. Similarly, Lord Lindley held at p. 607:
  38. "It appears to me that the real answer to the Appellants' case is this—that they invite your Lordships to look, not at the whole get-up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the Appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up, and not only that part of it in which the resemblances are to be found, the whole get-up does not deceive."
  39. In the Jif Lemon case (supra) the House of Lords dealt with passing off based on get-up alone. The Defendant's product used a plastic lemon shaped container like that of the Claimant's. Passing off was found despite the different labels attached to the parties' respective products. The Defendant here relied upon a passage at p. 505 of the speech of Lord Oliver:
  40. "the mere fact that the produce of the appellants and that of the respondents may be confused by members of the public is not of itself sufficient. There is no "property" in the accepted sense of the word in a get-up. Confusion resulting from the lawful right of another trader to employ as indicative of the nature of his goods terms which are common to the trade gives rise to no cause of action. The application by a trader to his goods of an accepted trade description or of ordinary English terms may give rise to confusion. It probably will do so where previously another trader was the only person in the market dealing in those goods, for a public which knows only of A will be prone to assume that any similar goods emanate from A. But there can be no cause of action in passing off simply because there will have been no misrepresentation."
  41. Lord Oliver continued at pp.507-8:
  42. "In the end, the question comes down not to … whether the appellants, in deliberately adopting, out of all the many possible shapes of container, a container having the most immediately striking feature of the respondents' get-up, have taken sufficient steps to distinguish their product from that of the respondents. As Romer LJ observed in Payton & Co. Ltd. v. Snelling, Lampard & Co. Ltd., 17 R.P.C. 48 , 56:

    "when one person has used certain leading features, though common to the trade, if another person is going to put goods on the market, having the same leading features, he should take extra care by the distinguishing features he is going to put on his goods, to see that the goods can be really distinguished …"
    I stress the words "to see that the goods can be really distinguished," for much has been made of the fact found by the judge and, indeed, readily observable by your Lordships that a careful shopper who read the labels attached respectively to the appellants' and the respondents' products would have no difficulty whatever in distinguishing them."

    Having referred to the passage from Schweppes set out above, Lord Oliver commented at pp. 508-9:

    "But, of course, statements such as this are made in the context of the particular facts under consideration. They cannot be treated as establishing a principle of law that there must always be assumed a literate and careful customer. The essence of the action for passing off is a deceit practiced upon the public and it can be no answer, in a case where it is demonstrable that the public has been or will be deceived, that they would not have been if they had been more careful, more literate or more perspicacious. Customers have to be taken as they are found.
    … in every case against the background of the type of market in which the goods are sold, the manner in which they are sold, and the habits and characteristics of purchasers in that market. The law of passing off does not rest solely upon the deceit of those whom it is difficult to deceive."
  43. In Moroccanoil v Aldi [2014] ETMR 55, [2014] EWHC 1686 (IPEC) where reliance was placed on a combination of a trade name and get-up, HHJ Hacon said at [31]:
  44. "Get-up may play a greater role in the recall and recognition of a particular product, but if the respective names of the claimant's and defendant's goods are distinctive, a misrepresentation by reason of similar get-up is likely to depend on the relevant public not noticing the name on the defendant's product, or on a label attached to it, as was the case in Jif Lemon."
  45. Passing off does not depend upon any intention to deceive, although where such an intention is found, the court will take it into account. A decision to live dangerously is not the same as an intention to deceive. In Specsavers International Healthcare Ltd v Asda Stores Ltd, [2012] EWCA Civ 24, [2012] FSR 19 Kitchin LJ said:
  46. "114 … [the Claimant] submitted that if a trader takes a decision to live dangerously he recognises a risk of a successful legal action and so also recognises a likelihood that his activity will deceive some people. …
    115. In my judgment it is important to distinguish between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader's goodwill. It has long been established that if it is shown that a defendant has deliberately sought to take the benefit of a claimant's goodwill for himself the court will not "be astute to say that he cannot succeed in doing that which he is straining every nerve to do": see Slazenger & Sons v Feltham & Co (1889) 6 R.P.C. 130 at p.538 per Lindley L.J. A trader who has taken the decision to live dangerously is in a different position, however. He has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away. All must depend upon the facts of the particular case. …"
  47. Mr Howe QC also submitted that the Defendant's packaging was actionable as an "instrument of deception." He relied upon the following passage in the judgment of James LJ in Singer Manufacturing Co v Loog (1880) 18 Ch.D 395 at 412 (the decision was later affirmed by the House of Lords):
  48. "… no man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer."
  49. In L'Oréal v Bellure [2007] EWCA Civ 968, [2008] RPC 9, Jacob LJ considered a claim of passing off by instruments of deception, where it was not suggested that the defendants' packaging would deceive anyone, only that some vendors would "exploit the names and packaging … to make false representations of their own. And that if they do so, the defendants are to be taken as responsible for that." He rejected that claim, as the judge had done below, relying on dicta of Aldous LJ in British Telecommunications plc v One in A Million Ltd [1999] FSR 1, at p.18:
  50. "In my view there can be discerned from the cases a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing off is such an instrument. If it would not inherently lead to passing off, it does not follow that it is not an instrument of fraud. The court should consider the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place. If, taking all the circumstances into account the court should conclude that the name was produced to enable passing off, is adapted to be used for passing off and, if used, is likely to be fraudulently used, an injunction will be appropriate."

    Jacob LJ held, at [132]:

    "If what is complained of does not inherently tell a lie, it is not an instrument of deception in itself. If it does tell a lie, it is no answer to say, as in effect the defendants in BT and the two old authorities were arguing: "but there may be circumstances where the lie will not in fact be understood as such." If a third party down the line says something dishonest about a product honest in itself, the vendor of the honest product is not liable in passing off. ..."

    Mr Howe QC submitted that were I to find that a sufficient number of staff using the wipes were or might be deceived, the Defendant's packaging would be an instrument of deception, even if those deceived are not strictly speaking end customers. The potential for damage to the Claimant's goodwill through such confusion, he said, would be the same.

  51. Lastly, there is the legal issue of how widespread any deception must be to be actionable. In Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40. Jacob LJ said at [111]:
  52. "Once the position strays into misleading a substantial number of people (going from 'I wonder if there is a connection' to 'I assume there is a connection') there will be passing off..."
  53. In Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501; [2013] FSR 21, Lewison LJ referred to dicta in Neutrogena [1996] R.P.C. 473 that
  54. "It is not a defence to passing off that many of a defendant's sales do not cause deception or confusion. There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By 'enough' I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill."

    On appeal in Neutrogena Morritt LJ held that the correct test was indeed whether a substantial number of members of the relevant public had been deceived. Lewison LJ concluded that the "important point is that passing off had been established even though most people were not deceived."

    Issue 1: does the Claimant have goodwill in its get-up?

  55. The first issue before the Court is whether the Claimant had goodwill in the get-up of its disinfectant and/or detergent wipes by the relevant date in late 2013. The Claimant needs to prove that the relevant public saw its get-up as a badge of origin and would rely upon it, despite the fact that the products were sold bearing a distinctive trade name, Clinell, which customers might be expected to rely upon as indicating the origin of the goods.
  56. It was not disputed the Claimant had sold very significant quantities of its disinfectant wipes in the Claimant's Packaging before the relevant date and was by then the market leader for the supply of disinfectant wipes to the NHS. On the other hand, there was no evidence given as to the numbers or value of detergent wipes sold prior to the relevant date. Dr Braverman gave evidence that the Claimant spent £361,000 on advertising between April 2010 and March 2013, and presumably part of the sum spent between April 2013 and March 2014 was spent prior to the relevant date. Dr Braverman also gave evidence as to the training given to NHS staff which, he said, educated them to recognise the function of the Claimant's wipes from the colour coding. Mrs Dixon gave similar evidence.
  57. The Defendant claimed that prior to the relevant date there were conventions in the industry about using colours to indicate the nature of wet wipes, so that there was no goodwill in the colours used by the Claimant. The Claimant did not accept that there was any such convention, and to the extent that it accepted that third parties used, for example, green colouring on disinfectant wipes, its case was that they used green in a distinctively different manner to the Claimant. The evidence as to the styles of packaging used by third parties at or before the relevant time was not wholly satisfactory, but I was shown some documents produced by the Defendant when it was designing its initial packaging and others found on the Wayback Machine. These show that, for example, PDI was using green and yellow during the relevant time for its disinfectant/detergent wipes and to my mind in a rather similar style (with blocks of colour) to the Claimant. Mrs Strazds said she associated yellow and white with PDI. In cross-examination, Dr Braverman accepted that similar colour ranges had been adopted by others in the industry (some before and some after the Claimant) including PDI which had been the market leader for such wipes before the Claimant started its business, and Clinitex, which was using yellow for detergent wipes at the relevant time. He accepted that yellow was the perceived colour of detergent wipes prior to the Claimant building up its business, and that several competitors, including PDI, had used green for disinfectant wipes before the Claimant did so. Dr Braverman described the use of those two colours as the "overriding industry norm" and accepted that it was logical for others in the market to adopt colour coding to indicate the purpose or properties of particular wipes. Dr Braverman also accepted that curved lines are common in the design of packaging for wipes.
  58. Nigel Watson has many years of experience in the supply of products to the NHS and between 2008 and 2014 had responsibility for the supply of wipes to the NHS from the NHS Supply Chain, in which capacity he dealt with the parties to these proceedings and their competitors. He gave evidence that in 2008 the leading supplier of wipes to the NHS through the NHS Supply Chain was PDI and at that point neither of the parties to these proceedings was supplying the NHS Supply Chain. However, by the time he left in 2014, the Claimant had become the leading supplier, with PDI in second place. Mr Watson denied that there was any industry standard, and described a variety of colours used by various suppliers. In the light of the evidence set out in paragraph 41 above, I am not convinced by that denial. However, Mr Watson also confirmed that PDI's flow-packs used blocks of the green/yellow colours on a white background in about 2012, although he said that the dominant colour used was white.
  59. In my judgment, there was evidence of frequent but not consistent use of green for disinfectant wipes and yellow for detergent wipes in the industry in about 2011-13. Some of the parties' competitors (e.g. PDI) continue to use those colours, to a greater or lesser extent, others (e.g. Clinitex) have since ceased to do so. In the circumstances, it seems to me that there was indeed a convention in the industry prior to the relevant date that green packaging denoted a disinfectant wipe, and yellow a detergent wipe.
  60. The "Colours of Clinell" advertising concentrated upon the "colour coding" of the products, not upon the additional indicia relied upon in these proceedings. The extent of use of this advertising before the relevant date was not clear, but in any event the advertisement positively identified the Claimant's use of a variety of colours "to help healthcare professionals easily distinguish and utilise the right products." This again reflects the convention in the industry. Although a number of the Claimant's witnesses gave evidence that they and others recognise the Claimant's disinfectant wipes by the colour green, the Claimant had expressly disclaimed any reliance on colour per se. The "Colours of Clinell" advertising did not, in my judgment, help to build goodwill in the overall design of the Packaging, nor show that consumers rely on the Packaging as a whole as an indication of origin.
  61. Most of the evidence I heard related to the disinfectant wipes. I have already referred to the evidence that staff refer to the disinfectant wipes as "green Clinell" wipes. Mrs Law gave evidence (discussed below) which suggested that hospital staff might assume that wipes in green packaging were Clinell wipes, but her evidence did not prove that the assumption was based upon the design of the packaging. This suggests to me that consumers identify the types of wipes by reference to the colour used on the packaging, or the range of colours used for the different Clinell wipes, and/or the name Clinell, but not that they rely upon the design of the Packaging as such. Mrs Strazds' evidence was less clear-cut (see below) but there was some indication that she thought the design important. Mrs Dixon, also an experienced infection control nurse, is familiar with the Claimant's products. She said that the Claimant is associated with the colours on its Packaging, because the colour scheme is used to market the wipes and train staff on which wipe to use for each purpose.
  62. There was very little evidence specifically about the yellow detergent wipes. In addition, the photograph annexed to the Particulars of Claim shows the form of packaging for the Claimant's maceratable wipes, not its standard detergent wipes and differs from it significantly. A different shade of yellow is used - a much more orange shade. It also has a smaller band of white at the top of the pack than does the standard pack, whilst the curved white line between the yellow and white parts of the pack is emphasised by a narrow line of orange. The Claimant's case identifying the elements of the detergent wipe packaging relied upon was thus far from perfect. However, it seems to me that the Defendant was well aware that the Claimant wished to rely on its standard detergent Packaging, and knew throughout the case which it had to meet. It was not misled by the fact that the "wrong" form of yellow Packaging was annexed to the Particulars of Claim, especially as the "right" form was shown in Annex 1 to the Reply. I would not preclude the Claimant from seeking relief in relation to the detergent Packaging on that basis.
  63. However, quite apart from taking the pleading point, the Defendant naturally suggested that the differences between the two yellow forms of packaging used for the Claimant's maceratable and standard detergent wipes were significant in terms of establishing goodwill. It submitted that the Claimant had failed to prove that any goodwill had been generated by the yellow packaging in either form and I think it right that there was no specific evidence about either version of the detergent packaging alone, but only as part of the range of goods.
  64. The Claimant has a significant business in which it undoubtedly enjoys goodwill. I have no doubt that the trade name Clinell which is used consistently and prominently on the Claimant's goods has an established reputation and goodwill. However, the Claimant does not rely on the name. It is very much less clear that there is goodwill in the combination of indicia pleaded in the Particulars of Claim, although the Claimant had been using the same design for about 6 years by the relevant date and had sold many millions of packs of wipes in that get-up. In addition, I find (below) that the Defendant sought to make a reference to the Claimant's Packaging when designing its own Packaging, it therefore seems likely that the Defendant saw the get-up as having some value or meaning over and above following the industry norm.
  65. The Claimant's case was not helped by the lack of clarity as to the design features which it relied upon, and the generality of the way in which it put its case. It was hampered by its disavowal of any reliance on colour alone, especially in the light of Dr Braverman's acceptance of the use of green and yellow as the "overriding industry norm" in the trade and that it would be logical for a competitor to adopt those colours. There was almost no direct evidence of reliance on any elements of the Claimant's get-up other than colour as an indication of the trade origin of the Claimant's goods, yet Dr Braverman had also accepted that curved lines (one of the two pleaded elements of the design) are common in the trade. Bearing all of these factors in mind, I have concluded that the Claimant has not proved that it had goodwill in the pleaded get-up of its disinfectant or detergent wipes, absent the Clinell trade name, by the relevant date.
  66. In case I am wrong in my conclusions as to goodwill, I will consider the other issues before the Court.
  67. Issue 2: who is the relevant consumer?

  68. It is clear that the overwhelming majority of sales of both parties' products are made directly to NHS Trusts. The average consumer is most likely to be a hospital procurement department, in the first place, whilst repeat orders might be placed by an infection control clinician or another member of the hospital staff with responsibility for maintaining levels of stock either centrally or on a ward. A smaller proportion of sales of both parties' products are made to specialist medical or hygiene supply distributors whose end customers are also likely to be clinicians of various kinds, such as GP surgeries, so that orders will overwhelmingly be placed by qualified staff or on the instructions of clinicians. Such people are the 'relevant consumers' of these goods. Such a person will generally be required to order approved products, or would at least be expected to take care to order a product which suits the clinical needs of the organisation in question, and so would pay more than average attention to ordering even such inexpensive items as these wipes. Perhaps someone working for a GP surgery or a care home might have less knowledge of the product than an experienced infection control clinician, but I consider that the majority of them (and they are a minority of purchasers of both parties' goods) would still have a reasonable level of expertise. The average relevant consumer is not a member of the general public.
  69. Issue 3: did the Defendant deliberately seek to pass off its products as those of the Claimant?

  70. It is clear that Mr Brucciani was well aware of the Claimant's packaging designs both when the Phase 2 designs were created in-house and when he received various design proposals from the external design consultants who created the Phase 3 Packaging. He denied having had the Claimant's Packaging in mind when improving and amending the designs proposed for the Defendant's packaging. I am afraid that I found that denial unconvincing. Mr Brucciani had researched the market and knew how the Claimant's products were packaged; he knew too that the Claimant was one of the market leaders. In the circumstances, I am not convinced that he did not have their designs at least at the back of his mind when approving the Defendant's designs. I infer that Mr Brucciani deliberately chose a design featuring curved colour blocks which was closer to the Claimant's Packaging than the alternative design proposed.
  71. Mr Brucciani said that he wished to follow market trends as to the colour ranges to adopt. Dr Braverman accepted that it was logical to follow that convention. However, it seems to me that the Defendant did rather more than follow the trend in the sector, and knowingly chose for the disinfectant wipes a shade of green very close to that used for the Claimant's Packaging. The colour chosen for the detergent wipes was, by contrast, further away from that used by the Claimant.
  72. In all the circumstances, I infer that the Defendant had the intention of following market trends, but more specifically intended to reference the Claimant's packaging and products, to indicate the nature of the Defendant's products as competing with the Claimant's goods. That was certainly a decision to live dangerously, especially once the Defendant knew of the Claimant's objections to its Phase 3 Packaging. I do not, however, consider that the evidence established that the Defendant had an intention to deceive or pass off. Significantly, the trade name chosen was distinctively different from "Clinell" and the disinfectant wipes were described as such, not as "universal" wipes like the Claimant's. There are also other noticeable differences between the parties' packaging. Moreover, I accept Mr Brucciani's evidence that the Defendant wanted its goods to be distinguished from the Claimant's goods, if only because the Defendant had every interest in building up goodwill for its own Medipal brand, in which it was making a significant investment.
  73. Issue 4: Was there evidence of actual deception?

  74. There are some obvious similarities between the fronts of the parties' flow wraps for the disinfectant wipes as well as some significant differences. The overall impression is quite similar, particularly because the shade of green used for the standard disinfectant wipes is very similar:
  75. a. The shade of green used on both parties' disinfectant wipe packages is extremely similar if not identical, and there is (in broad terms) a similar use of white horizontally across the front of the package. Based upon those features alone, there would be a possibility for deception based upon imperfect recollection, or an assumption that one pack is an updated version of the other.
    b. On the other hand, the proportion of the Defendant's packs which is white is greater than in the Claimant's Packaging and the dividing line between the green and the white is much less obviously curved than in the case of the 'wave' used in the Claimant's Packaging.

    c. The Defendant's packs also have a small 'swoosh' of green at the top right of the front of the pack. This was somewhat larger in the Phase 3 packaging than in the Phase 4 pack, and in that version at times little of that swoosh of colour can be seen, depending on how the pack is viewed.

    d. The parties' very different trade names are clearly present on the front of the packs. Indeed, both parties use their names prominently on the upper side of the pack, and the Defendant also uses Medipal on the bottom side, and on the back of the packs (in black on white or white on green). The Claimant complained of the similarity of the font used by the Defendant, but I do not find either party's font remarkable or memorable, and I do not think the font is obviously similar. What I find much more significant is that the name Clinell is used on the front of the package in large, thick lower case letters and in green, whilst the name Medipal is capitalised and in black. In my view, this emphasises the differences between the names.

    e. Each pack has a broadly rectangular flap on the front over the opening through which wipes are dispensed. I think that this flap would be visible if either party's pack were used in a Clinell dispenser, or, indeed, in the Defendant's wire dispensers. The flap on the Claimant's Packaging is green, edged in white, with the words "Universal Wipes" or "Clinell" with "Universal Sanitising wipes" in white print. On the Defendant's packs, the flaps are white and bear the words "Disinfectant Wipes" or (as appropriate) "Maceratable Disinfectant Wipes" in green. The differences in the flaps are more striking on the packs than in the photographs.

    The same points may be made about the current detergent wipe packaging, save that the Claimant accepts that there is a perceptible difference between the shades of yellow used by each party.

  76. The Claimant did not rely upon the design of the side or back of its Packaging, ostensibly because the front is the most important, but perhaps because there are few distinctive elements other than the colour green used on the pack. There are further differences between the sides and backs of the parties' respective packs such as the Defendant's prominent use of its trade name on both of the long sides of its pack, as well as in green text on the white background of most of the back of the pack. The Claimant's Packaging, by contrast, uses the trade name on the upper side of the pack, but on the bottom and back of the pack there is a great deal of text in very small white font, which does not emphasise the Clinell name so much as the name Gama. Where the whole pack is seen, these points may be relevant.
  77. Several instances of alleged actual deception were pleaded, but not proved by a witness with direct knowledge, but only by Dr Braverman's statement of truth. I do not feel any of these carry any weight. However, a number of other instances of alleged confusion were attested to by witnesses who provided witness statements and attended for cross-examination.
  78. First, Mr Watson gave evidence that he had attended the annual conference of the Infection Prevention Society in London in September or October 2013. He described seeing the Defendant's stand at the conference and having been struck by the similarity of its packaging to the Claimant's products. In his witness statement, he said that he therefore assumed that there must be some arrangement between the parties, and having seen no mention of the Claimant's name on the Defendant's product, asked Dr Hanouka of the Claimant whether there was any such connection. In cross-examination, however, he said that he had wondered if there was some connection. That is, of course, an important distinction in terms of passing off. His evidence must, it seems to me, be seen in the light of the fact that Mr Watson had visited the Defendant's factory only about two weeks before the exhibition, something which he did not mention in his witness statement. He had been shown the range of Medipal products, yet he claimed not to have noticed how close the Defendant's Packaging was to the Claimant's Packaging until he saw it in the context of the exhibition, with the other products in the market. For someone with a detailed knowledge of the wipe industry, I found that explanation very odd. It is also surprising that he would have wondered about a connection to the Claimant when he had so recently visited the Defendant's premises and (according to Mr Brucciani's unchallenged evidence) commented that the Defendant would compete with the established brands. In the light of these aspects of his evidence I feel it necessary to treat his evidence with caution. I do not consider that I can rely upon his evidence as proof of confusion or deception.
  79. Mrs Strazds gave evidence that she had attended the Infection Prevention Society Conference in September 2012. She saw what she thought (from a distance) was the Claimant's stand because of the range of packaging on show, and the colours used, but on closer inspection realised it was the Defendant's stand. She thought that the Defendant had copied the Claimant's Packaging. She was confused despite the clear Medipal branding on the Defendant's stand. It seems probable (it was not wholly clear) that her confusion arose from the colour range on the stand, even though the Packaging then on show was the Phase 2 Packaging in its somewhat different colours, rather than from the more specific details of the packaging design used by the Defendant. If so, then in my judgment such confusion arose from aspects of the Defendant's Packaging to which the Claimant does not object, given that it disclaims any objection to colour alone, in line with Dr Braverman's evidence about practices in the industry.
  80. Miss Ewart works for the Claimant. She gave evidence of having been approached by two infection control nurses who asked why the Defendant's Packaging was so similar to the Claimant's. This does not seem to me demonstrate that they had been confused, rather the opposite. Miss Ewart attended the Infection Prevention Society Conference in 2014 and says she was approached by three people who had confused the Defendant's stand with the Claimant's, because of the similarity of the parties' packaging. However, I do not consider that I can give any significant weight to this evidence, because in cross-examination Miss Ewart said that she assumed that they were confused for that reason and accepted that the range of colours on the parties' stands may have led to the confusion.
  81. Mrs Law is an infection prevention nurse who provides training for the Claimant in the use of its wipes. Her evidence was that in August 2015, in the course of providing training to staff in a South Teesside hospital on the use of the Claimant's Clorox wipes, a number of members of staff asked her whether they would be using the Clorox wipes in place of the "green Clinell" wipes. That hospital had previously used the Claimant's disinfectant wipes, but had changed over to the Defendant's wipes in June 2015. One such member of staff showed Mrs Law a packet of Medipal disinfectant wipes which had been placed into a free standing Clinell dispenser. Those dispensers are rectangular green plastic tubs which can either be attached to a wall or free standing. A packet of wipes is inserted into them from the top, and wipes are dispensed through an opening on the front. The dispensers are embossed or printed with the trade name Clinell on the front. Once a packet of wipes is put into the dispenser, much of the front of the packaging (which is what the Claimant relies upon) is not visible, although the corresponding opening in the flow wrap, and the flap which closes over it, may be seen. Furthermore, from the pictures in the evidence it appears that the dispenser has no lid, so that, depending on where the tub is placed, the user may or may not be able to see the side of the packet of wipes which is at the top of the open tub. If the packet can be seen in that way, the user would clearly see the trade name, Clinell or Medipal, which is printed in large letters on each long side of both parties' packaging.
  82. Mrs Dixon had said in a witness statement that without seeing the parties' respective products side-by-side she would not have known which was which. When it was put to her that this indicated that she would ignore the trade mark on the packaging, she explained that wipes are mostly dispensed from the green Clinell dispensers so that one cannot easily see the logo and, especially in a busy ward, a user would just "grab" a wipe without looking for a logo. This, it seems to me, may well explain the confusion which Mrs Law described and shows that such confusion was not caused by the Defendant's get-up.
  83. Issue 5: Has there been a misrepresentation to a significant part of the relevant public?

  84. Mrs Dixon speculated that others might be confused by the Defendant's Packaging, but she was not personally confused. Nor was Mrs Law confused. Her evidence shows that it is possible for an end user who is accustomed to using the Claimant's wipes to assume that the Defendant's wipes are the Claimant's wipes, despite the fact that the Defendant's packets prominently bear the Medipal name, especially where one of the Defendant's packets is inserted into a Clinell dispenser which is clearly marked with the name Clinell. I accept Mrs Law's evidence that she met with staff members who apparently thought, wrongly, that they were using "the green Clinell" wipes. However, she did not know what had caused such people to be confused. She did not give evidence that anyone who had been confused told her that the cause of the confusion was the Medipal packaging. The confusion could have arisen from the similarity of that get-up to the Clinell packaging but equally could have arisen from the fact that the wipes were in a green packet, or that they were contained in a Clinell dispenser (rather as Mrs Dixon suggested), or because Mrs Law was giving training for another Clinell wipe, or simply from a mistaken belief that the hospital was continuing to buy the wipes which the user knew it had previously purchased.
  85. The Defendant relied upon the manner in which products are ordered by NHS hospitals. Ms Bellamy-Thomas is an employee of the Defendant company responsible for the sale of the Defendant's clinical wipes to the NHS. She has lengthy experience of working in the NHS and in the sale of health care products. Her evidence was that sales of new products are achieved only after a concerted marketing effort aimed at Infection Control Nurses and hospital procurement departments and after success in product trials. She said that no sale had been made of Medipal wipes to an NHS hospital without there having first been a successful trial of the wipes. When a trial is underway, staff are required to complete forms about the product which are clearly marked Medipal, and there would seem no real scope for those members of staff to be confused.
  86. NHS Trusts or hospitals may (but do not necessarily all) use central ordering, and put a materials management system ("MMS") in place. In those circumstances, it is possible for the hospital to "mask" unapproved products by name or by code as a way of ensuring that mistakes are not made, and only approved products are ordered and purchased. The Defendant contends that such a practice is commonplace, which Dr Braverman contested in the light of documents showing sales of a variety of competing wipes to NHS Trusts supplied by the Claimant. However, none of those documents showed sales of both sides' disinfectant or detergent wipes to the same Trust. Ms Bellamy-Thomas agreed that one hospital may purchase a variety of different disinfectant wipes, but explained how this might arise from a clinical need to have a variety of wipes, rather than a lack of masking. Mrs Dixon gave evidence that even in hospitals where masking is in place, it is not absolutely fool-proof. I conclude that there is no universal practice of masking products, but where masking is in place it would seem likely to reduce significantly the likelihood of orders being placed by mistake. Ms Bellamy-Thomas also said that in some hospitals a bar code scanner is used to re-order products and this too would seem likely to reduce the scope for error.
  87. The Defendant also relied on the fact that the NHS Supply Chain ordering system requires a customer to input an individual product code. Mr Watson and Ms Bellamy-Thomas described the practice of putting up posters in wards or sluices showing the NHS Supply codes for particular products, to enable reordering. Ms Bellamy-Thomas added that usually there will be a list of products with their codes by the computer used to place orders. An individual product code links to a page in the NHS Supply catalogue showing the appropriate disinfectant wipes. According to Dr Braverman, for a substantial period no image of the Medipal packaging was shown on such pages. The catalogue now shows an image of the product, as well as the Claimant's products. A search for disinfectant wipes produces a page with a number of products listed, each of which shows a small image and description of the product. The sample search produced in court shows five products on a page, three of the Defendant's, one Tuffie product and one Clinell product. All have green and white packaging, and in my view, the parties' respective packs look less alike than when viewed side by side. A search using the Defendant's product code leads directly to a page specific to a Medipal product, with a much larger image. The 'headline' description of the Defendant's product in each case omits the trade mark, although it is shown beneath it and on the image of the pack, whilst the Clinell trade mark also appears in the headline.
  88. Ms Bellamy-Thomas accepted that images of the packs were used in advertisements and the catalogue so that people could recognise the product with which they were familiar. However, she did not accept that someone familiar with the Clinell name and product would miss the difference in the name, on either page. This seems to me a wholly reasonable response. Someone wishing to re-order a Clinell product would in the first instance see a range of products listed and would be likely to scroll down until they found the one they wanted, especially if (as in the example used in court) several different suppliers' wipes are shown on the page. Someone landing on the individual Medipal page would be likely to notice the Medipal name which is clearly shown on the pack.
  89. The Claimant's evidence established that professional users of their products know the Clinell name, and identify their wipes either as "green Clinell" wipes or "Clinell wipes." In the circumstances, I think that someone intending to purchase a Clinell product and not having the product code to hand would probably use "Clinell" as a search term, and this would reduce the likelihood of confusion being caused by the Defendant's get-up. In my judgment, it is also unlikely that if a generic search led to a webpage with a range of different wipes on it someone would, as the Claimant suggested, ignore the product name when ordering the wipes. There was no evidence of actual deception caused in this way.
  90. Dr Braverman and Mr Watson suggested that confusion might occur by reason of samples of the Defendant's products finding their way on to a hospital ward, leading to orders being placed for the Medipal product by mistake. It is clear that when a new product is being trialled, a small number of Medipal wipes may find their way onto wards. Mr Watson said that orders could be placed for the Defendant's wipes if they were mistaken for the Claimant's and the code on the Defendant's Packaging used to place an order, and it was not masked by the hospital's MMS. I accept that it is not impossible that this could happen, especially on a busy ward, and perhaps with temporary or agency staff involved, but it strikes me as an unlikely scenario. It seems to me that such a mistake would only be made by someone who was not aware that the Defendant's wipes were only on trial on the ward. Such a person would not necessarily place the order due to having been confused by the get-up of the wipes, but would more probably do so simply because those were the wipes on the ward when the order was placed, and s/he would assume that the wipes were the right ones to order. In other words, there would not be any confusion arising from the Defendant's get-up. In my judgment, this scenario does not disclose a likelihood of relevant confusion arising save in exceptional cases and again there was no evidence of actual deception caused in this way.
  91. Similarly, if a member of staff used the Medipal product code to effect the search, and turned up the individual product page, I consider that they would be likely to notice that it was a Medipal product, not a Clinell product, and it seems to me that only a minority of people might attribute the difference in name to a change of trade mark or supplier rather than to a mistake in the search process.
  92. The Claimant also argued that hospitals would be happy to use the Defendant's wipes because they look similar enough to the Claimant's wipes for the hospital to be able to dispense with staff training in the use of the Defendant's wipes. Ms Ewart said that she had been told by one infection control nurse, Mr McCaffrey from the South Tees NHS Trust, that his hospital had chosen to move to the Defendant's products in part because the packaging was so similar to the Claimant's that there would be no need for staff training. Oddly, though, she also said that he had indicated that the Defendant's product would be used as a detergent rather than as a disinfectant, with another disinfectant wipe being introduced. I found it hard to understand how those two statements could be reconciled but Ms Bellamy-Thomas explained that Mr McCaffrey had hoped to save time by omitting training for the trial of the Medipal wipes. Medipal in fact trained staff both for the trial and after the products were accepted by the Trust. I conclude that Ms Ewart had misunderstood what she was told by Mr McCaffrey and I place no reliance upon that part of her evidence. In the light of all the evidence in the case, I do not accept that there is any serious likelihood that NHS hospitals would choose to use the Defendant's products in lieu of the Claimant's so as to avoid the need for training.
  93. Both parties sell their goods through wholesalers, and I was shown print-outs of the websites of several such distributors, which print-outs showed that the parties' respective goods might be shown on the same page, with small images of both, whether as part of a range (in one instance) or as an alternative product (in others). These sites appear to specialise in selling medical or hygiene supplies, although at least one of them (MediSupplies) describes itself as carrying medical supplies for professional, business and home use. Mr Howe QC indicated that such sites tend to be used by smaller users, such as nursing homes, GP surgeries and the like, and it seems to me that these sites are not seriously targeted at or likely to be used by members of the public.
  94. It was the Claimant's case that someone purchasing wipes from such a website would be likely to be deceived into buying the Defendant's goods in lieu of the Claimant's goods, where the very similar get-up meant that in the small illustrations shown online the products were indistinguishable from each other. One possibility is that the products are shown together on the same page, either as one of a number of alternative products, or because one party's product is suggested by the website as an alternative to the product which has been found by Internet search. On the print-outs shown to me where a number of different products are shown, the illustrations are very small and it is certainly hard to distinguish the features of the packaging, but the product name is shown in each case above the illustration and given the small size and dubious quality of the illustrations, it seems to me that the purchaser would be likely to rely upon the name rather than the picture, or would click through to an individual page and a larger image. On pages featuring just one party's product, the illustrations tend to be better, and the trade names are larger.
  95. Ms Bellamy-Thomas explained that these distributors also have their own product coding system, which would presumably mean that in some case at least products would be re-ordered by use of such a code. In the circumstances, it seems to me that the likelihood of deception in those circumstances is extremely low. I do not discount the possibility that a purchaser (particularly someone purchasing the goods relatively infrequently) might be deceived and order the Defendant's wipes instead of the Claimant's wipes, but I think that such cases would be relatively rare. I do not consider that the possibility of such cases of deception shows (as required in Neutrogena/Interflora) that a sufficient number of people are likely to be deceived to cause passing off. And, yet again, there was no evidence of actual deception caused in this way.
  96. The Claimant complained of some advertisements placed by the Defendant, especially where the Claimant had advertised on a "belly-wrap" placed around a professional journal, which had an advertisement for the Claimant on the back page. In my judgment, none of these were likely to lead to deception, if viewed fairly and by the professional people at whom they were targeted.
  97. Mr Howe QC submitted that no confusion would have arisen had the Defendant's disinfectant wipe packs been less similar to the Claimant's, for example, purple like the Azo wipes, rather than green, so that for instance even if those packs were used in a Clinell dispenser, someone replacing them would notice the difference. That is certainly probable, but I do not consider that it is determinative of the issues which I have to decide. The Claimant's case is not that it is entitled to prevent the Defendant from using any form of green and white packaging. Significantly, it seems to me, the Claimant does not object to the green (or yellow) and white get-up used by the Defendant when selling its wipes in tubs, which use the same colours nor, more importantly, to the Defendant's Phase 2 packaging. There are differences between the Phase 2 and Phase 4 packaging, but if the Phase 2 packaging is not objectionable, it seems to me improbable that the Phase 4 packaging is objectionable. This is consistent with my view of the lack of evidence of actual or likely deception.
  98. I have taken into consideration the nature of the Claimant's case, which rather as in Schweppes (supra) invites this Court to look at only part of each party's Packaging and ignore the most conspicuous difference of the trade name. I have also considered the specialist market in which the great majority of these goods are sold, the manner in which they are sold, the characteristics of the majority of purchasers, the manner of purchase, and the unsatisfactory evidence of alleged confusion adduced by the Claimant. I conclude that most people will not be fooled most of the time, but there is a small risk of deception of some people in atypical circumstances. I do not consider that there is a risk of deception amongst a sufficiently substantial number of the Claimant's customers or potential customers for there to be a real effect on its goodwill. Nor, in all the circumstances, do I consider that the Defendant's products amount to instruments of deception. In my judgment, therefore, the Claimant has not established a case of passing off.
  99. Annex
    Picture 1
    Picture 2


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