"Casino services; betting services; gambling services; bookmaking services; casino, betting, gaming, gambling and bookmaking services provided by means of electronic media, the internet, telecommunications, telephone, wireless or offshore telephone, or television."
“93. The goods and services covered by the Vegas signs are identical, or at any rate virtually identical, to those covered by the Community marks: in each case, the goods and services are those provided by an online casino, and the signs or marks are used to brand the casino. This is an important initial point, because in such circumstances a lesser degree of similarity between the marks may suffice to establish a likelihood of confusion (proposition (g) in the Trade Marks Registry summary). 94. That the Vegas signs are similar to the Community marks is in my judgment undeniable. In both their written and their graphic forms, there is an initial figure 32 followed by a single word (or in the case of the 32v signs, followed by a single letter which in its context plainly alludes to the word "vegas"). The figure 32 does not of itself denote anything to do with online gaming: it is just a number, and not even a number with obviously lucky (or unlucky) connotations, such as 7 or 13. Furthermore, the single word "vegas", like the colour "red", is agreed to have a gaming association. Thus the use by William Hill Online in 2009 of the inherently specific number 32 in conjunction with the single word "vegas", to identify and brand an online casino, clearly satisfied the test of similarity. The critical question, therefore, is whether the similarity was such as to give rise, in all the circumstances, to a likelihood of confusion on the part of the public, including a likelihood of association in the sense of engendering the mistaken belief that the two casinos were operated by the same or economically-linked entities. 95. In answering this question I must look at the matter through the eyes of the average consumer of online gaming services, whom it is convenient to call an "online gambler" for short, while remembering that for many customers the activity is essentially a recreational one, and not all customers play for real money. I must also make due allowance for the fact that the average online gambler will rarely have had the opportunity to make direct comparison between the Community marks and the Vegas signs, and will have had to rely on the imperfect picture of them retained in his mind. It is material to note in this context that the online gambling market is a crowded and volatile one, with a large number of brands competing for customers' attention, and generally very low levels of customer loyalty and retention. 96. I think it is also relevant to have in mind the difference between the marketing models of 32Red and 32Vegas. By January 2009 32Red was a strong brand with an excellent reputation, and from its inception in 2002 it had been promoted alone, not as part of a family of brands in common ownership. By contrast, 32Vegas had always been marketed on the "carousel" model, and as Mr Cole-Johnson frankly acknowledged the reputation of individual casinos was never of any particular importance to William Hill Online, any more (I infer) than it had previously been to Crown Solutions. In these circumstances it seems to me reasonable to conclude that the Community marks are likely to have made a rather stronger and more positive impression on members of the online gambling community than the Vegas signs. 97. The next point I would make is that the Community marks are, and were in 2009, highly distinctive in character. The distinctiveness lay in the combination of the specific number 32 (which in itself has no obvious gambling connotation) with the word or the colour red, which is agreed to have a general gambling connotation. Some, but by no means all, online gamblers will also have picked up the specific allusion to roulette, and will have recognised the marks as making a verbal or visual reference to the result that a croupier would be likely to call out when the ball lands in the 32 slot. This allusion, I would stress, is not directly descriptive of the game of roulette, or of any particular feature of the game; but, for those who recognise it, the allusion gives a much stronger and more specific gaming flavour to the Community marks than the mere use of the word or colour red could do by itself. In a similar way, the red colouring of the script and of the circle in the graphic Community mark reinforces the effect of the word "red", but those who recognise the allusion to roulette may also see the circle as a stylised representation of a roulette ball. 98. I now turn to the Vegas signs. The three text signs all begin, like 32Red, with the figure 32. In two cases this is then followed by the word "vegas" which, because of the obvious allusion to Las Vegas, has a strong (but still general) gambling connotation. In the third case, the single letter "v" will, as I have already said, naturally be read as an abbreviation of "vegas". There is no allusion to roulette or to any other specific game offered by an online casino, and the number 32 has no connection of any kind with Las Vegas. Read or recalled as a whole, the text signs are in my view devoid of any descriptive character beyond the generalised reference to gambling inherent in the word "vegas". The main visual sign is reminiscent of a neon casino sign, and the gaming message is reinforced by the red and gold colouring and the star. The two smaller visual signs focus on the gold 32 and star with the interlocking white "V", and in one case the red background is also similar to that of the main sign; in the other case the background is black, another colour with a generalised gaming connotation (for example the suits of playing cards are either black or red). 99. As a matter of overall impression, the dominant feature of all the Vegas signs is in my view the figure 32. It comes first, whether one is examining the verbal, visual or aural impact of the signs, and in the graphic signs the 32 is notably larger and more brightly coloured than the white "Vegas" or "V". An online gambler would naturally gain the impression, perhaps at a subliminal level, that the "Vegas" component of the signs is in some way subordinate in impact and importance to the "32", although he would also recognise that the "Vegas" is connected with and part of the "32" (a connection visually reinforced by the interlocking of the "2" and the "V"). 100. Was there, then, a likelihood of confusion on the part of the average online gambler in 2009 between the Vegas signs and the Community marks? In my judgment there was. It is simplest to begin with the online gambler who did not pick up any allusion to roulette in the Community marks. For such a person, the overall impression created by the Community marks and the Vegas signs would have been very similar: in each case the name of the casino consists of the same number (32) in the dominant position (verbally, visually and aurally), followed by a single word with a general gaming flavour. A natural conclusion to draw would have been that the two casinos were under common ownership or economic control. In addition, the likelihood of an association between the two casinos might well have been reinforced, consciously or unconsciously, by the red background to two of the three graphic Vegas signs, including the main sign where the figure 32 is prominently displayed in gold against a bright red background. The combination of the figure 32 and the colour red could hardly be more striking, and in view of the established reputation of 32Red in 2009 the link to 32Red would have been an obvious and easy one for many online gamblers to make. In a world where stables of thematically-linked online casinos were familiar, there would have been nothing surprising in a burgeoning family of "32" casinos. What would have been surprising, given the highly specific nature of the number 32 and its lack of any intrinsic gambling association, is for two unconnected casino operators to have hit on two such similar names independently. 101. I must now consider those online gamblers, perhaps the majority, who would have picked up an allusion to roulette in the Community marks. For them, the 32Red name and brand will have had a special extra significance, and they may have agreed in substance with Mr Bailey's perception that the name "seemed a clever play on words … it was a breath of fresh air" (paragraph 138 of his report), even if they would not have expressed themselves in quite such enthusiastic terms. But, to return to a point which I have already made, the allusion does not turn the marks into purely, or even partly, descriptive ones. It just gives an added layer of reference, and increases the distinctiveness and memorability of the marks, for those who pick it up. It does not alter the basic form and structure of the marks in any way, nor in my view does it detract significantly from the features discussed above which give rise to a likelihood of confusion with the Vegas signs. The position is, rather, that online gamblers who were alive to the allusion might also have supposed there to be an association between 32Red and another casino which called itself (say) 8Black or 28Even. 102. For these reasons I have come to the conclusion that 32Red's infringement claim under Article 9(1)(b) succeeds in relation to the Community marks, and does so in relation to all of the Vegas signs. ..”
“139. Applying these principles, it seems clear to me that neither of the Community marks infringed Article 7(1)(c) at the dates when the applications for their registration were made in 2002. The combination "32Red" does not describe or designate any feature or characteristic of the goods or services supplied by an online casino. There is an allusion to a possible result in roulette, but in my judgment that allusion did no more than to create an association with roulette, which was itself no more than one of the games offered by the 32Red casino. Furthermore, the evidence shows that the association is far from obvious and was not picked up by many members of the relevant public. In short, I agree with and accept the submission for 32Red that a mark which can be read as describing a particular result in roulette does not designate a characteristic of the game of roulette, let alone a characteristic of the whole range of goods or services provided by an online casino. Nor, looking at the matter more broadly, can I find any indication of the kind of detriment to the public interest which underpins the absolute grounds in Article 7. It seems to me that the combination "32Red" is inherently distinctive, precisely because it does not describe or designate any part or feature of the business of an online casino.
“140. … The test under this heading is separate from the test under Article 7(1)(c), because although a mark that is descriptive will necessarily also lack distinctive character, the converse is not true: a mark may not be descriptive, but may nevertheless fall foul of Article 7(1)(b) (see the Postkantoor case at paragraph 86). In the present case, however, the considerations which have led me to conclude that there was no breach of Article 7(1)(c) are in my judgment equally applicable to Article 7(1)(b). As the ECJ said in Joined Cases C-53/01 to C-55/01 Linde AG v Deutsches Patent-und Markenamt [2003] R.P.C. 45 at paragraph 40 of the judgment, for a mark to possess distinctive character within the meaning of this provision "it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings". The Court went on to say that the question of distinctiveness must be assessed by reference to the goods or services for which registration is sought, and the perception of consumers of the relevant goods or services. Applying these criteria, I am entirely satisfied that the two Community marks have at all material times functioned as a badge of origin in the online gaming community, and that the combination of "32" and "Red" had from the beginning a clear distinctive character.”
“141. … As the ECJ explained inCase C-517/99 Merz & Krell GmbH & Co [2002] E.T.M.R. 231 at paragraphs 32 to 41 of the judgment, the focus of the equivalent provision in Article 3(1)(d) of Council Directive 89/104 is on current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered, and it is for the national court to determine in each case whether the signs or indications which comprise the mark have become customary in the current language or in the bona fide and established practices of the trade to designate the relevant goods or services. It is immaterial, for this purpose, whether the signs or indications are of a descriptive nature. The evidence in the present case comes nowhere near establishing the existence of any such customary usage for either "32" or "Red" in isolation in 2002, let alone for the two of them in combination. The most that can be said is that the colour red, like black or gold, had a gaming connotation; but the word "Red" is not used in isolation in either of the Community marks, and in any event the evidence does not establish that it was used to designate online casino services. The most it could do, in combination with another sign or indication, was to impart a generalised gambling flavour.”
“145. Adwords are a familiar feature of life on the internet, and the reaction of the average consumer, when the sponsored link to 32red.com came up on his screen, would I think be one of indifference or irritation, but not of confusion. If the consumer then clicked on the 32Red site, its clear branding could have left no room for reasonable doubt about the identity of the casino whose services were on offer. If the consumer did not click on the site, he will presumably have continued with the search which he originally intended, and is most unlikely to have supposed that there was any business connection between 32Red and the site which he originally sought to access. In a very few cases, the customer may have been grateful for the reminder that there was another online casino called 32Red, but in such cases confirmation or clarification would have been the result, not confusion. I am therefore wholly unpersuaded that the effect of 32Red's adword campaign was to mislead the public. 146. Even if that is wrong, the evidence indicates that the campaign has been too insignificant in extent to generate any significant degree of confusion. Mr Ware's evidence is that bidding on 32royal as an adword has not resulted in a single user clicking on the 32Red advertisement. Bidding on Spin32 has resulted in only 8 users clicking on the 32Red advertisement, yielding a fee to Google of£13.70 . None of those users subsequently signed up as a member. Bidding on 32Vegas as an adword resulted in a total of 251 users clicking on the 32Red advertisement, at a cost to 32Red of£884.04 . Of those users, 20 signed up as members of the 32Red site, and 10 of them played for real money, generating a "gross win" of£1,795.44 . Furthermore, the total number of "impressions" generated by the campaign, that is to say the number of occasions when the 32Red advertisement was published alongside the search results for the adword, has been very modest. Over a period of some 20 months the total number of impressions for adwords including "32Vegas" in various combinations was about 22,500. Not only is this a relatively small number, but it can also be seen that only a tiny proportion of the customers to whom the 32Red advertisement was displayed in this way actually then chose to click on it.”
“71. Apart from the connection with roulette, the colour red, like black and gold, is commonly used for online casino brands. Numbers are also popular, but 32 has no special gambling connotation. In an interview with Casinomeister in October 2002 Mr Ware told Mr Bailey that "32Red is one of the most popular numbers in a brick and mortar casino (if 32Red has come up several times during the evening, the manager knows they will have less money to count than usual!)." Since that date, this statement has featured prominently on Casinomeister's website; but Mr Ware explained in his oral evidence that he never intended it to be taken seriously, and he had no grounds for saying that 32 is a lucky number in roulette. There is no evidence before me that 32 has any reputation as a lucky number, in roulette or any other game, and I am satisfied that Mr Ware's statement to Mr Bailey was indeed no more than a promotional ploy.”
"(1) It is to be inferred that, in applying to register "32", the Claimant intended to prevent other traders in the market place from using the number 32 and therefore from trading or from entering the market for the supply of casino and gaming services and similar. (2) Further, the Claimant could not objectively have thought that a roll on the roulette wheel had come to denote its casino and gaming services. Accordingly, it is to be inferred that the application was made without a genuine belief that the mark was properly a trade mark. (3) Further, or in the alternative, the Claimant had no genuine intention at the date of application for the mark to use [the UK mark] in respect of all goods and services for which registration was sought."
“161. … As counsel for William Hill Online made clear in their written submissions, the "act" relied on is the adword campaign, and the "inactivity" relied on is the alleged failure by 32Red to take steps to prevent others from using "32" signs in relation to casino services. I have already explained why the adword campaign did not in my view create confusion or turn the 32 sign into common currency. I am equally satisfied that the figure 32 has never become the common name in the trade for online casino services, whether or not 32Red could have tried harder than it did to stamp out instances of apparent infringement.”
“165. The critical distinction from the position with the Community marks is that 32Red had not by the end of July 2009 (and so far as I am aware still has not) made any, or any significant, use of the 32 mark in isolation. Such uses as it did make of the figure 32 would in my view all have been naturally understood in their context as alluding to, or as truncated versions of, one or other of the Community marks. In these circumstances, I am satisfied that 32Red had not yet acquired any separate reputation in the 32 mark, so for that reason alone the claim for infringement under section 10(3) must fail. For the same reason, it also seems to me that there cannot have been any likelihood of confusion under section 10(2), because in the absence of any separate use of the 32 mark to distinguish the services offered by 32Red and act as a badge of their origin there can have been no factual basis for the alleged confusion. I can well understand that there was a possibility of confusion in the future, if and when 32Red made significant independent use of the 32 mark; but focussing, as I must, on the position in June and July 2009, I am not satisfied that the claim for infringement under section 10(2) is made out.”
“97. It is not necessary that the signs and indications composing the mark that are referred to in article 3(I)(c) of the Directive actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that those signs and indications could be used for such purposes. A word must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned: see to that effect, in relation to the identical provisions of artic 7(I)(c) of Council Regulation (EC) No. 40/94 of20 December 1993 on the Community trade mark, Office for Harmonisation in the Internal Market (Trade Marks and Designs) v Wm Wrigley Jr Co (Case C-191/01 P) [2004] I WLR 1728, 1751 -1752, para 32.”
“50. The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee, paragraph 31, and Koninklijke KPN Nederland, paragraph 56). 51. Those specific points are of particular relevance as regards signs which are composed exclusively of numerals. 52. Given that such signs are generally equated with numbers, one of the things that they can do, in trade, is to designate a quantity. Nevertheless, in order for a sign which is composed exclusively of numerals to be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 on the ground that is designates a quantity, it must be reasonable to believe that, in the mind of the relevant class of persons, the quantity indicated by those numerals characterises the goods or services in respect of which registration is sought. 53. As is apparent from paragraph 26 et seq. of the judgment under appeal the General Court based its decision on the fact that the sign 1000 can indicate the number of pages in the goods covered by the application for registration and on the fact that ranking lists and collections of data and puzzles – in respect of which there is a preference for the content to be indicated by one or more words coupled with round numbers – are frequently published in those goods. 54. Without it being necessary to determine whether each of those factors supported the inference that the number 1000 characterises the goods referred to in the application for registration, the fact remains that, at the very least, the finding made by the General Court, to the effect that the sign ‘1000’ is descriptive in relation to the collections of puzzles contained in those goods, is not incompatible with the specific points made above regarding the scope of Article 7(1) (c) of Regulation No 40/94. 55. As is apparent from paragraphs 26 and 27 of the judgment under appeal and from the extracts from the contested decision to which those paragraphs refer, the Fourth Board of Appeal of OHIM and the General Court found that Technopol had applied for the sign ‘1000’ to be registered, inter alia, in respect of ‘periodicals, including periodicals containing crossword puzzles’. They also found that there are many goods of that kind on the market and that the number of points of information contained in those goods can generally be expressed in round numbers. According to the find which the Board of Appeal made in paragraph 19 of the contested decision and to which the General Court essential referred in paragraphs 26 and 27 of the judgment under appeal, the sign ‘1000’ on a publication of that kind will be perceived as an indication that it contains 1000 crossword puzzles.”
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
“The critical question, therefore, is whether the similarity was such as to give rise, in all the circumstances, to a likelihood of confusion on the part of the public, including a likelihood of association in the sense of engendering the mistaken belief that the two casinos were operated by the same or economically-linked entities.”