esure Insurance Ltd v Direct Line Insurance Plc [2007] EWHC 1557 (Ch)

[2007] EWHC 1557 (Ch)Case No CH/2007/APP/21
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 29 th June 2007
Before
THE HON. MR JUSTICE LINDSAY
Between
esure INSURANCE LIMITEDAppellantDIRECT LINE INSURANCE plcRespondent
Michael Silverleaf QC and James Mellor QC (instructed by Taylor Wessing) for AppellantGeoffrey Hobbs QC and Guy Hollingworth (instructed by Linklaters) for RespondentHearing Hearing dates: 22 nd, 23 rd and 24 th May 2007
Judgment

Introduction

[1]Direct Line sells insurance and financial services direct to the public, contact to and from the public largely being by way of online, email and telephone contact. In 1990 it began, in its advertisements, to use a device, a representation of a telephone on wheels. It has used that device ever since and has spent literally millions of pounds in drawing it to the public’s attention in connection with its services. The device has become a very well known mark to “consumers” of insurance. Direct Line has long since acquired both national and Community marks consisting of the telephone on wheels device which, whilst the marks are almost invariably used in red and black in combination, are not marks limited to colour and include monochrome forms.[2]On 29th March 2005 the Registrar made available to the parties the preliminary opinion that the rival marks were not similar and that there was no likelihood of confusion between them. However, Direct Line did not thereupon drop its opposition and accordingly evidence was filed and the matter went to a hearing before the Hearing Officer, Mr Allan James. It lasted 3 days: 9 witnesses called by Direct Line gave oral evidence, all being cross-examined on behalf of esure. At the hearing before him esure had been represented, as it was before me, by Mr Michael Silverleaf QC leading Mr James Mellor QC and Direct Line had been represented, again as before me, by Mr Geoffrey Hobbs QC and Mr Guy Hollingworth. The very comprehensive written judgment was released to the parties on 13th December 2006. The Hearing Officer held that Direct Line had made good its objections to esure’s registration of the mouse on wheels.[3]On 10th January 2007 esure lodged its Appellant’s Notice. Direct Line lodged a Respondent’s Notice which, although it is undated in my copy, I do not understand to have been untimely.[4]The Hearing Officer’s decision is spread over some 189 paragraphs on 43 pages, large slabs of which have excited no comment at all. He sets out the facts as he saw them in full detail. For the moment it suffices that I shall give only the short introduction which I have already done save to say that, after esure had applied for registration on 10th September 2004, Direct Line, on 9th May 2005, began a very extensive advertising campaign featuring its existing red telephone on wheels trade mark but then with its added “friend”, as it is described to me, a red computer mouse on black wheels, which appears in its advertisements alongside the red telephone. The chief immediate relevance of this telephone-cum-mouse device and its use by Direct Line has been the effect it was held to have had upon a professional survey of the public which Direct Line sought to rely upon in its assertion that, were esure’s mark to be registered, a likelihood of confusion between the marks would arise. The effect of Direct Line’s extensive use of a mouse on wheels, so held the Hearing Officer, was effectively to invalidate the survey upon which Direct Line had intended to rely as an important component of its evidence.[5]The Hearing Officer’s decision included conclusions upon arguments raised under Article 4(1)(b), (3) and (4) of the First Council Directive 89/104 of December 21st, 1988 but only later will I set out in detail the legislative provisions with which the Hearing Officer was concerned. Instead, I shall look first at a number of subsidiary issues before turning to the law. Then, but only after I have set out what I perceive to be the relevant law, will I describe the Hearing Officer’s conclusions in more detail and turn to the various issues raised in the Appellant’s Notice and the Respondent’s Notice respectively. I shall come to conclusions under separate headings and finally come to an overall conclusion.

The proper approach on an appeal such as this:

[6]The appropriate test is best discerned from a study of Reef Trade Mark [2002] EWCA Civ 763; [2003] RPC 5 in the Court of Appeal. The Reef pop group applied to register “Reef” for Classes 25 and 26 – e.g. T-shirts, badges, etc.. South Cone Inc opposed the registration as registered proprietors of “Reef Brazil” for the footwear which also was included in Class 25. The opponent’s reputation was primarily amongst surfers. The Hearing Officer, having conducted what he called a “multi-factorial” comparison, had rejected the opposition based on the likelihood of confusion – para 13. The Hearing Officer had then gone on to consider section 5(4) of the Trade Marks Act 1994 (notional passing off). He held that surfers would not be confused about the source of products bearing the applicant’s mark – para 16. On the appeal to him, Pumfrey J. had reminded himself of passages from judgments of Buxton LJ in Norowzian v Arks Ltd (No. 2) [2000] FSR 363 at page 370 and Pro Seiben Media AG v Carlton United Kingdom Television Ltd [1999] 1 WLR 605 at 612 9 (see Reef paras 18 and 19) and had stated his conclusions as to what was the proper approach – see Reef para 21. That summary was held by the Court of Appeal to be not wrong but to be “a rather meagre summary of what is quite a complex point” – Reef, para 23. Accordingly, whilst not persuaded that Pumfrey J. had not set out with the right general approach to his task – Reef at para 30 – the Court of Appeal set out more fully to state what was required of that correct approach.[7]If I may therefore attempt to summarise Reef and the cases cited therein, they indicate, so far as relates to the area with which I am concerned, as follows:-(1) distinction may be required to be drawn between the lower Court’s evaluation of and conclusions as to primary facts on the one hand and as to inferences therefrom on the other. The appellate Court may not improperly be less reticent about interfering with the fact-finder’s conclusion as to the latter;(2) moreover, even inferences from primary facts may be divisible into categories; they may be simple (“the smoking gun”) or of a kind itself involving a process of evaluation by the fact-finder;(3) as for the appellate Court’s approach to the fact-finder’s evaluation of primary fact, there is no single standard appropriate to all cases; variables to be borne in mind include the nature of the evaluation required, the standing and experience of the fact-finder and the extent to which he had had to assess oral evidence;(4) as for an assessment on appeal of a fact-finder’s evaluation, it needs to be borne in mind that his findings are an inherently incomplete statement of the impression made upon him by the evidence; especially where there has been oral cross-examination there will be nuances he picked up from the evidence but which his words themselves do not adequately disclose;(5) respect has traditionally been paid to the specialised experience of hearing officers – Reef, para 28- (notwithstanding – see Reef, para 1 – that they are not usually qualified lawyers);(6) accordingly, a high degree of reluctance to interfere with a Hearing Officer’s decision (in the absence of a distinct and material error of principle) is appropriate where, in the course of an evaluation, he had to weigh up many factors and where his decision has required assessment of contested oral evidence.[8]Mr Hobbs also referred to Hachette Filipacchi Presse SA v Saprotex International (Proprietary)Ltd [2007] EWHC 63 (Ch), unreported, 24th January 2007 in which the Chancellor recently endorsed the continuing applicability of the Court of Appeal’s judgment in Reef, supra.[9]In the case at hand the Hearing Officer was required to consider very many factors and his tasks included the evaluation of contested oral evidence. Mr Hobbs therefore puts this case into the category in which great respect should be paid to the experience of the Hearing Officer and in which there should be great reluctance in interfering with his decision. Mr Silverleaf, whilst willing to pay regard to the Hearing Officer’s experience in general, sought to belittle it in relation to evaluation of contested evidence; he did that by reference to the small number of cases which, he said, Mr James had heard in recent years, relative to the numbers dealt with by his fellow hearing officers, to the small number of those cases that had involved cross-examination and to the number of them which were subject, to Mr Silverleaf’s knowledge, to pending appeal. That attack was not based on evidence properly-so-called and in any event was such that without further enquiry it would be utterly worthless. For example, an officer who had heard a long and complicated case with so much at stake that an appeal was almost inevitable and which involved cross-examination over many days would, on Mr Silverleaf’s approach, be taken to be less experienced than one who over the same period had heard many very simple cases, ones where cross-examination had barely gone beyond the formal and in which so little was at stake that, whoever won or lost, appeal was improbable. I do not accept this attack on the question of the degree of respect duly to be paid to a hearing officer’s decision. I remind myself of Piglowska v Piglowski [1999] 1 WLR 1360 at 1372 and must thus be on my guard not to substitute my own view for that of the fact-finding tribunal unless a distinct and material error of principle on the Hearing Officer’s part is demonstrated.[10]I accept the place which Mr Hobbs ascribes to this case in any spectrum which describes the proper approach of an appellate Court. I do not understand Mr Silverleaf ultimately to dispute this; his argument, rather, is that this is far from being a borderline case; there are, he urges, clear errors of principle visible in the Hearing Officer’s decision and which are crucial to the conclusion to which he came.[11]I shall not be ambitious enough to attempt a full definition of what is, for present purposes, an error of principle such as to justify or require departure from the decision below save to say that it includes the taking into account of that which should not have been, the omission from the account of that which should have been within it and the case (explicable only as one in which there must have been error of principle) where it is plain that no tribunal properly instructing itself could, in the circumstances, have reasonably arrived at the conclusion that it reached.[12]I shall need to consider the orally rather loosely-described errors of principle urged upon me by Mr Silverleaf and the more specific Appellant’s Notice. But that can only be done by first looking at both domestic and, more importantly, EC decisions as to what is the correct approach to trade mark application and opposition to it. Only when that ground has been laid can one determine whether there has been such a departure therefrom as could fairly be described as one involving any distinct and material error of principle. First, though, I shall deal with esure’s argument that weight should have been given by the Hearing Officer to the Registrar’s preliminary view that there was no likelihood of confusion on the part of the public.

The Registrar’s preliminary view

[13]An application for registration of a trade mark is made in Form TM3. Opposition to the registration is launched by the use of Form TM7. Neither of those forms, when completed, includes what one would ordinarily call evidence. Unless the applicant for registration files a counter-statement his application for registration shall be deemed to be withdrawn where there has been acceptance by the Registry of the TM7. After considering the statement of the grounds of opposition and, where there is one, the counter-statement, the Registrar is to notify the parties whether it appears to the Registrar that the mark should or should not be registered in respect of the goods and services listed in the application – the Trade Marks Rules 2000, rule 13B. The date upon which such notification of preliminary view is sent is the “indication date” which determines who is to act within what period if either the opposition or the application for registration shall be deemed to be withdrawn. The Registrar need not give reasons why it appears to him or her that the mark should or should not be registered, nor shall such view be subject to appeal – 2000 Rules, 13B(5). The preliminary view would seem to have no function save as I have mentioned. It emerges at a stage where there has been no explanatory evidence laid before the Registry. The statement by the Registrar of his or her view cannot be taken to be a decision which is adverse to a party under the Rules because, were that to be the case, the Registrar could only come to the view after giving the prospective loser an opportunity to be heard – 2000 Rules, r54(1), which opportunity is not given.[1]On the 29th March 2005 the Trade Marks Registry sent to the parties’ advisers a notice under Rule 13B(2) that:
“having considered the Statement of Grounds and Statement of Use of the earlier trade mark provided by the opponent, the specification of goods and services of the application in suit and the jurisprudence of the Court of Justice I give the following preliminary indication. The Class 36 services included in the specifications of the opponent’s trade marks are identical and/or very similar to the services included in the specification of the mark in suit. However, overall the mark in suit is not similar to any of the opponent’s marks and there exists no likelihood of confusion on the part of the public.

(b) ”

. The Registry’s letter continued, appropriately, that if the opponent wished to proceed to the evidential stage it should file a notice of intention to proceed on a Form TM53 within one month of the date of the letter and that otherwise it should be deemed to have withdrawn its opposition in accordance with Rule 13B(4)(a) of the Rules.[14]Before the Hearing Officer esure had invited him to take the Registrar’s preliminary view into account. The Hearing Officer declined to do so. He said: “Nor am I prepared to give any weight to that opinion, either as evidence supportive of esure’s contentions in these proceedings, or otherwise”.[15]As a subsidiary argument, esure argues before me that the Hearing Officer was wrong to reject the Registrar’s preliminary view in the way that he did. Mr Hobbs, drawing attention to the Rules to which I have referred and also to Article 6 ECHR, argues that the Hearing Officer was right in doing as he did. I have no doubt but that the Hearing Officer was right to do as he did. The Registrar’s view was arrived at before there was any evidence on either side, before there was any argument on either side and in a context in which it could not be regarded as a decision against the interests of either side without the prospective loser being given an opportunity to be heard, an opportunity which was not given. So far from it being an error of principle to fail to take the Registrar’s preliminary view into account, it would, in my judgment, have been a serious error of principle for it to have been taken into account.

Act or Directive?

[16]Although the Hearing Officer’s decision is couched throughout in terms of section 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994, the argument before me has mainly been by reference to corresponding provisions of the First Council Directive 89/1004 and thus to Article 4(1)(b), 4(3) and 4(4)(a). For that reason my references, too, shall be mainly to the provisions of the Directive, but there is an exception; it is common ground that the relevant present meaning of the Directive as to unfair advantage and detriment is best found as in section 5(3) of the 1994 Act as amended so on those subjects I shall mainly refer to the Act rather than to the Directive.

Onus

[17]There has not been oral argument on this subject but in the Loaded case, to which I shall refer below, the Appointed Person, adopting an earlier decision of the Hearing Officer in Audi-Med Trade Mark (1998) RPC 863, held that the Hearing Officer in that case had been correct in his analysis that the approach underlying Article 4 of the Directive was that a mark should be registrable unless another party was in a position to prevent the applicant from using the mark applied for at the date of application. That conclusion related to a case under section 5(3) of the 1994 Act but the reasoning was wide enough to include section 5(2) and hence to include also Article 4(1)(b). I respectfully adopt that and shall proceed on the footing that in the case before me, as before the Hearing Officer, the onus is upon Direct Line – see also Sigla infra at paras 43 and 48.

Identity of Services

[18]Both esure and Direct Line, as I have already touched upon, sell insurance, of various descriptions including motor insurance, and financial services. Each, as I have understood it, sells, when it sells in its own name, only through itself. One cannot, if I may so put it, apply to esure in order to buy from it cover from the Norwich Union nor, to put the converse case, can one expect the Prudential to serve one with a Direct Line policy. Although in that detailed sense each is, so to speak, a retailer of something available only from that retailer, for immediate purposes the services respectively provided by them can be taken to be identical. But it has not been argued nor could it be said that the rival marks are identical, even within the less stringent view of identity which some ECJ decisions now seem to espouse. Accordingly, whilst I shall come on later to the requirements of section 5(3), so far as concerns Article 4(1)(b), I have been concerned only with questions as to similarity of mark and sign and as to the likelihood of confusion. Both of those terms need further consideration.

The Law: Article 4(1)(b) Similarity

(b) Similarity

[19]It will not be necessary for me to refer to every one of the many provisions and authorities cited to me but I shall attempt to deal with most of the principal ones and shall place them in their chronological order. 2. The First Council Directive 89/104 of December 21st, 1988 provides, at Article 4 as follows, so far as is here material:- “1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:(a) …(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”[20]It is to be noted that there has to be a causal connection between the similarity on the one hand and the likelihood of confusion on the part of the public on the other. There could perhaps have been a case for refusal to register or for a declaration of invalidity where confusion arose on the part of the public irrespective of proof of its cause. But that is not what the Directive provides; a strict causal connection – “if because of” – is required between the similarity and the likelihood of confusion. It is, no doubt, for that reason that the recitals to the Directive saw the necessity of developing a common understanding throughout the Community of what was meant by “similarity”. The tenth recital states: “whereas it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion;” - see also Sabel BV v Puma AG, Rudolf Dassler Sport Case C-251/95, [1997] ECR I-6191 the earliest of the ECJ cases to which I was referred and one in which Advocate-General Jacobs refers to the tenth recital and the “concept” of similarity in his paragraphs 18 and 40.[21]So far as concerns what one might call “4(1)(b) similarity”, the 1997 Sabel case makes a number of points which remain part of the law of the Community on the topic. Firstly, there are the references to the indispensability of a common interpretation being given to the concept of similarity to which I have already referred. Secondly, similarity is a matter that can be spoken of as one of degree – see the judgment at para 22. Thirdly, similarity can include conceptual similarity, for example, analogous semantic content in both the mark and the sign – see the judgment at para 24. Mr Silverleaf would seek to diminish the weight to be given to analogous semantic content in what is, as I shall come on to, the overall assessment of similarity but, subject to the next point, I see no error in giving it some weight, leaving the question of how much weight, which will plainly vary hugely from mark to mark, to the fact-finder who has the whole overall assessment before him. 1. Fourthly, where the only similarity is conceptual, a notion that is explained variously as being the case where the ideas conveyed by the elements of the marks or the ideas behind the marks are similar, the likelihood of confusion can be expected to be relatively more difficult to prove – the Advocate-General in Sabel at paras 62 and 64(2); the judgment of the Court at para 26. Fifthly and very importantly, there has to be a global appreciation of the visual, aural or conceptual similarity of the marks in contention, an appreciation that must be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components – judgment at para 23. Finally, why that overall impression is crucial is because “the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details” – judgment at para 23. The next in time of the cases to which I was referred, Lloyd Schuhfabrik Meyer v Klijsen Handel BV [2000] FSR 77 ECJ, brought out three further precepts relating to 4(1)(b) similarity. Firstly, it underlined the notion of interdependence; a lesser degree of similarity between the rival goods or services may be offset by a greater degree of similarity between the marks and vice versa – para 20. Secondly, it is for the national court to assess the degree of visual, aural or conceptual similarity between the rival marks “and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed”. The word “elements”, is not there used necessarily to refer to what I shall call detailed aspects or items of, say, a graphic design (e.g. details such as its colour, that it represents a bird, that the bird is in flight, that the bird has two fish in its talons, that the bird is looking downwards, etc) but rather, at a little more abstract a level, first to a division of the mark into the respective visual, aural or conceptual elements of the marks in opposition. Whilst the role of detail will vary from mark to mark, to require the fact-finder invariably to descend into fine detail in his analysis would breach the requirement that the fact-finder is to look through the eyes of consumers who view the marks as a whole and who do not proceed to an analysis of detail. Thirdly, it must follow from the interdependence principle, from the reference to the need to take account of the category of goods or services in question and the circumstances in which they are marketed, that 4(1)(b) similarity cannot be tested-for in the abstract but rather that its detection is highly fact-sensitive and that the relevant facts include ones going beyond a blinkered comparison in which the fact-finder looks only at the mark and the sign. As 4(1)(b) similarity between marks thus requires an examination of factors quite outside the looks, the sounds and the ideas behind the rival marks and is to be adjudged overall and as if by an average consumer, it is right, in my view, to regard 4(1)(b) similarity as an autonomous concept of European law, one related, no doubt, to, but not invariably the same as, similarity in the simplest dictionary sense. I do not understand Marca Mode CV v Adidas AG & Others Case C-425/98 to add anything of relevance on the subject of 4(1)(b) similarity. Valucci Designs Ltd v IPC Magazines – BL 0-455-00, of the 22nd September 2000, the case concerning the magazine “Loaded” to which I have already referred, was a decision of Mr Simon Thorley QC as Appointed Person. He had held that that case was a case as to “non-confusing” uses – see his para 62 – and it does not add to the law on 4(1)(b) similarity. I was then referred to Sihra’s Trade Mark Application, a decision of Patten J. reported in January 2003 at [2003] RPC 44. At para 12 the learned Judge emphasises the need for a causal connection between similarity on the one hand and relevant confusion on the other; by his citation of British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 Patten J. underlined the need to keep “similarity” and “confusion” as issues separate from one another. Finally, for immediate purposes, in his para 12 Patten J. also speaks of “the threshold requirement for a recognisable degree of similarity between the goods and services in question”. I shall need later to revert to questions as to the materiality of “thresholds” because there is argument before me (considered by Mr Hobbs to be one of the only two errors of principle which he accepts Mr Silverleaf to assert) as to whether there is a threshold requirement for a recognisable or impliedly prescribed degree of similarity between the mark and the sign which are in opposition to one another. The ECJ decision in Adidas-Salomon AG & Anor v Fitnessworld Trading Ltd handed down in October 2003, Case C-408/01, can be left until I later come on to section 5(3). 23. The next case in the chronology, Vedial SA v OHIM, France Distribution Case C-106/03 P of October 2004 reported in the ECJ at [2005] ETMR Pt 2 p.232, requires more detailed attention. Vedial had obtained French registration of the mark “Saint-Hubert 41” for Class 29 goods, butters, edible fats and dairy products. France Distribution applied to register as a Community trade mark in, inter alia, Class 29, a mark consisting of the word “Hubert” in a prominent style of lettering capped with a drawing of a jovial chef in a chef’s cap with his thumb held up in the air. The report does not indicate how Vedial’s mark Saint-Hubert 41 was registered or was commonly used; it seems it was a simple word-mark. A tortuous series of decisions led to a judgment in the ECJ which upheld the decision of 12th December 2002 of the Court of First Instance – Case T-110/01. The CFI, applying, inter alia, Lloyd Schuhfabrik Meyer, supra,found it necessary to compare the rival signs from the visual, aural and conceptual points of view – CFI, para 48. The CFI rejected – para 51 – an argument that in principle a figurative mark such as the one with the picture of the chef could not display any visual similarity to a mere word mark, such as Vedial’s. The CFI accordingly turned to examine each of the three elements of the rival marks or signs, the visual, the aural and the conceptual. So far as concerned the visual element, the CFI held that the overall visual impression conveyed by the earlier mark was different from that conveyed by the mark claimed. Consequently it held that the dissimilarities between the conflicting signs were sufficient for it to be held that they were not similar visually – para 54. It so concluded notwithstanding, of course, that the rivals each contained the word “Hubert”. The CFI then compared the aural stresses inherent in French in the words “Saint-Hubert” and the single word “Hubert”. It held that the marks were dissimilar from an aural point of view. So far as concerned conceptual similarity, it noted that, whereas Saint-Hubert was likely to evoke in the mind of the targeted public a saint of the catholic religion or the name of a place, the word Hubert, on its own, corresponded to a common Christian name. The CFI, rebutting conceptual similarity, said, at its para 58:
“… it is sufficient to observe that the targeted public will make distinctions between the ideas evoked by each sign.”
Saint-Hubert and the Christian name Hubert had distinct semantic meanings and the figurative component of the mark claimed, namely the style of the lettering and the representation of the jovial chef, constituted a distinguishing feature such that it must be held, said the CFI, that there was no conceptual similarity between the conflicting marks.[22]Taking the visual, aural and conceptual issues together, at its para 65 the CFI had held that the conflicting signs (with my emphasis) could not “in any way be regarded as identical or similar from the visual, aural or conceptual points of view, …”. Accordingly, one of the essential conditions of a bar to registration had not been satisfied. “It therefore follows” held the CFI next at its para 66, “that the Board of Appeal was right in finding that there is no likelihood of confusion between the mark claimed and the earlier mark”. As there had been no enquiry into confusion, it is difficult to see how that last sentence could be justified unless one remembers that the “likelihood of confusion” being there referred to was the kind of likelihood spoken of in 4(1)(b), namely one arising “because of” the similarity. A plainer and more logical approach (because the CFI, as I say, did not in fact look into the likelihood or not of confusion) would have been to say that because there was no relevant similarity there could not be any relevant confusion and hence that no need to examine whether some confusion had been caused had ever arisen. In any event, the CFI dismissed Vedial’s objection. 25. In the judgment of the ECJ at paras 53 and 54 one finds that Court’s conclusion as follows, with my emphasis:
“After making a comparative study, at [48] to [59] of the judgment under appeal, of the two marks in the visual, aural and conceptual senses, the Court of First Instance concluded, as stated at [65] of the judgment, that the marks could in no way be regarded as identical or similar for the purposes of Art 8(1)(b) of Regulation No 40/94. Having found that there was no similarity between the earlier mark and the mark applied for, the Court of First Instance correctly concluded that there was no likelihood of confusion, whatever the reputation of the earlier mark and regardless of the degree of identity or similarity of the goods or services concerned.”
Again, the absence of 4(1)(b) similarity of itself precluded there being any relevant likelihood of confusion. Vedial’s appeal was dismissed in its entirety.[23]Inescapably there were items common to Vedial’s word mark and France Distribution’s mark with the genial chef. In each of them the letters H-U-B-E-R-T appear and appear, moreover, in the very same order. Again, aurally, there were similarities between the way the two marks would sound. Yet it was held that there was no similarity at all; the marks could “in no way” be regarded as similar. In my judgment, Vedial does point towards there being a threshold below which there is no 4(1)(b) similarity, irrespective of there being items, indeed several items, common to both marks.[24]It cannot be, consistently with Vedial, that any similarity between aspects or items of the rival marks which can be identified leads to a need to go on to consider whether the required likelihood of confusion has been demonstrated (or is to be assumed or can fairly be inferred) and if it has been, whether it has been caused by the similarity. There is, it would seem from Vedial, some threshold such that once the required overall appreciation has been made, consistently with the autonomous concept of similarity to which I have referred, and has proved negative, then any aspects or items of similarity are left inconsequential as they are effectively displaced by the negative overall appreciation. Moreover, if some such threshold is not equalled or exceeded then one can thereafter, for the purposes of 4(1)(b), properly speak of the marks as being “in no way” similar.[25]Mr Hobbs resists this reading of Vedial. There is, he says, no threshold at all; it suffices, in order to require the likelihood or not of confusion to be examined, that there is any item or aspect of the marks that is similar. Only if the signs are completely different is it possible to take the view in principle that there is no likelihood of confusion; even a slight similarity requires that likelihood to be examined. If Vedial says otherwise,he adds, that is explicable by reference to its procedural history. I do not accept that; the language used by the ECJ does not appear to have been constrained by the procedural history of the case and the notion that any item or aspect of similarity suffices flies in the face not only of the conclusion reached in Vedial but with the notion that 4(1)(b) similarity is a concept, as I have mentioned, ultimately based not on minute analysis of the items and aspects of the rival marks but one determined by way of a global appreciation, the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components but having regard also to the interdependence principle and the other factors to which I have already referred. Indeed, unless there were to be some threshold which has to be equalled or exceeded, then, as, in practical terms, no one, surely, would embark on a contest were there to be not even a single aspect of the rival marks that was similar and if, therefore, in any contested case, even an insignificant and minor item or aspect of similarity inescapably led to the need to examine whether there was the appropriate likelihood of confusion, one would, in practical terms, have repealed such language of 4(1)(b) as requires both similarity and the causal link to which I have referred; one would in every contested case go straight to an examination of the likelihood of confusion. I shall need to return below to the “threshold” argument at later stages in this chronological approach to the authorities which were laid before me.[26]Home-Tek International’s Applications – BL 0-144-05, 20th May 2005 was a domestic decision in which the experienced Appointed Person at his para 26 said:- “There is “similarity” to be assessed under Article 4(1)(b) when there are elements of visual, aural or conceptual resemblance that may enable the later mark to exploit the distinctiveness of the earlier mark”. Taken out of context, that may be said insufficiently to separate the existence of similarity on the one hand and its possible effects on the other but, leaving that aside, the sentence does suggest that there is a threshold to be equalled or surpassed. The threshold there described is that the similarity needs to be such as may enable the later mark to exploit the distinctiveness of the earlier mark but the Appointed Person does appear to recognise that there is some threshold.[27]Next in time of the authorities to which I was referred is Muehlens GmbH & Co KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2006] ECR I-2717 and to the opinion of Advocate-General Ruiz-Jarabo Colomer. I was not taken to any judgment of the Court. The German Court’s decision had rejected the CFI’s thesis that the degree of phonetic similarity between the two trade marks had been so insignificant that it would not give rise to any likelihood of confusion, since the degree of identity of the marks was not sufficiently great – para 75 of the Advocate-General’s opinion. The German Court’s knuckles were severely rapped by the Advocate-General who, at his para 78, described the German Court’s decision as a dysfunction of a kind such that it was necessary to bring it to an end not just in that case but in order to facilitate harmonious development of economic activity in the Community as a whole. Consistently with the CFI’s decision, which I have not seen, there must have been a threshold below which such similarity – phonetic - as could be asserted was so insignificant that it either could not or would not give rise to any likelihood of confusion. That may be thought to give rise to a mingling of the initially separate concepts of similarity on the one hand and likelihood of confusion on the other but some form of threshold can be seen to remain to be the case even when there is that mingling. 31. Next there is Soffass SpA v OHIM, Sodipan SCA intervening, a decision of 23rd November 2005 by the CFI reported at [2006] ETMR 542. It was a contest between a figurative mark containing the word “NICKY” and another containing the word “NOKY”. Of the five letters in the former, three are to be found in the same order in the latter and there is some degree of aural similarity. The CFI, having referred itself to Vedial, next continued at its para 27:
“Therefore, if the signs are completely different it is possible in principle, without examining the goods in question, to take the view that there is no likelihood of confusion”
. How that could be thought to emerge from Vedial, as the word “therefore” suggests, it is difficult to see because in Vedial the signs were manifestly not completely different, nor were they in Soffass itself. Moreover some examination of the goods in question is invariably necessary to see how far, if at all, the principle of interdependence is applicable. But, at its para 31, the CFI continued:
“Therefore, if there is even a slight similarity between the two signs the likelihood of confusion must be assessed globally, taking account of all the relevant factors”
. That suggests that any threshold is a very low one.[28]In Picasso and Others v OHIM and DaimlerChrysler AG the judgment of the ECJ of 12th January 2006, adopting the Sabel supra requirement that there should be a global appreciation of the visual, aural or conceptual similarities of the marks in question, emphasised, at its para 20, that, in the course of such a global appreciation, conceptual differences observed between the signs might counteract the visual and phonetic similarities between them. 02 Holdings Limited v Hutchinson 3G UK Ltd is reported at [2006] RPC 29. At his paragraphs 117 and 118 Lewison J. drew attention to the fact that the “average consumer”, the arbiter of similarity, is a legal construct; that, as it seems to me tends, if anything, to emphasise that similarity is, as I have earlier mentioned, an autonomous concept of European law. Lewison J. drew attention to the fact that similarity and likelihood of confusion are intimately bound together. 33. L’Oreal SA v OHIM, Revlon (Switzerland) SAintervening, is case C-235/05 P in which the ECJ’s judgment was published on 27th April 2006. The case is more concerned with the likelihood of confusion than it is with the concept of similarity but at its para 40 the ECJ’s judgment describes the Lloyd Schuhfabrik Meyer supra approach to similarity as settled case law. Mr Silverleaf, drawing attention to paragraphs 31 and 32, in particular, of L’Oreal, argues that the Hearing Officer fell into error; he gave undue influence, says Mr Silverleaf, to the perceived distinctive character of the telephone on wheels. Paragraph 31 of the Report in L’Oreal emphasises that, so far as concerns the assessment of similarity, what must be concentrated on is the perception of the relevant public. Paragraph 32, speaking of a complex mark, observes that the extent of the distinctiveness of an element of a complex mark will be a guiding factor in determining whether such distinctiveness will dominate the overall impression conveyed by that mark, irrespective of the assessment of the similarity of the two signs. The observations contained in paragraphs 31 and 32 are, in fact, under the heading “Argument of the Parties” but nonetheless seem to represent observations of the Court itself. When, under the heading “Findings of the Court”, the Court summarised the proper approach in paragraphs 40 and 41, it twice referred to Lloyd Schuhfabrik Meyer supra and adopted its reasoning. In paragraph 42 the Court said:
“It follows that the distinctive character of the earlier mark cannot have the significance which the applicant argues it should be given in the comparison of the signs in question, as it is not a factor which influences the perception which the consumer has of the similarity of the signs.”
In that passage the words “distinctive character”, I apprehend, are used to speak of the force with which the earlier mark brings to the mind of an average consumer that the goods or services so marked have emanated from or are connected with the proprietor of the mark. I can understand how “distinctive character”, in that sense, is required to be left out of account when assessing section 4(1)(b) similarity but Mr Silverleaf did not go on to identify passages in the Hearing Officer’s decision which indicated that he had, indeed, fallen into error in his understanding of L’Oreal and its application to this case. Unhelped by any specific references in the Hearing Officer’s decision I found myself unable to identify any misunderstanding or mis-application of L’Oreal by the Hearing Officer.[29]Nike International Ltd v Fina Calzados, S.L is a decision of the Second Board of Appeal of 19th May 2006 in Case R 301/2005-2. It is chiefly concerned with other aspects of trade marks but at its paragraph 33 the point is made that, in relation to particular goods, it can be that the public is more than usually “brand conscious” and therefore relatively attentive. To that extent the overall assessment can be affected by whether the goods or services in question are of a kind in which an unusually high degree of “brand consciousness” is to be found. 35. L’Oreal SA v Bellure NV [2007] ETMR 1 is a decision of Lewison J. of 4th October 2006. The case requires particular attention because it appears to deal with the question of whether there is some minimum threshold of similarity required, a question which, as I have mentioned, is arguably bound up with one of the errors of principle which esure asserts is to be found in the Hearing Officer’s decision in this case. At his paragraph 110 Lewison J. said:
“Mr Wyand submitted that there was a threshold degree of similarity which had to be crossed before the court would consider whether the extent of similarity could have either of the effects required by s.10(2) and s.10(3) respectively. I do not agree. In my judgment similarity is a relative concept. A sign can be more or less similar to a mark…. Whether something is relevantly similar to another thing seems to me to depend on why you are asking the question. In the case of trade mark infringement the question is asked in order to determine whether the degree of similarity has had (or would have) a particular effect. In my judgment this is borne out by the ruling of the ECJ that a lower degree of similarity between the mark and the sign may be counterbalanced by a greater similarity between the goods to which the mark and the sign are respectively applied. Accordingly, in my judgment, there is no minimum threshold of the kind for which Mr Wyand contended. It is a question of degree in every case.”
Sections 10(2) and 10(3) of the Trade Marks Act 1994 are concerned not with opposition to registration but with infringement but I have not understood either side before me to say that the concepts in the 1994 Act of similarity and of likelihood of confusion are, for immediate purposes, materially different as between infringement on the one hand and opposition to registration on the other.[30]Lewison J’s judgment does not itself specify what kind of minimum threshold Mr Wyand QC had contended for but I have been given a copy of the very full Skeleton Argument which Mr Wyand and his junior, Mr Moody-Stuart, deployed before Lewison J.. At para 29 the Skeleton Argument makes the point that “absent at least similarity there can be no infringement”. The argument continues:- “This is a threshold test and is to be considered in each case by a visual, aural and conceptual comparison of the mark and sign”. Although that is not a complete specification of the test for the relevant 4(1)(b) similarity – it leaves out, inter alia, the concept of interdependence – it is hard to fault it as far as it goes. If all that Mr Wyand was arguing for was that there had to be at least some similarity, I would not think that Lewison J. was intending to reject that argument. Nor does the fact that the question is one of degree of itself exclude there being a threshold. I notice, too, that, so far as one can tell from the report, Vedial supra was not referred to the Judge. But Lewison J’s observation that whether “something is relevantly similar to another thing must depend on why you are asking the question” is, as it seems to me, irresistible. “Are they similar”, asked of marks, would be almost bound to meet the response “For what purpose?”[31]That is not to say that in every case where some one or more items or aspects, howsoever insignificant, of the rival marks can be said to be similar, the fact-finding body necessarily has to go on to examine into the existence or not of a likelihood of confusion because that would obviate the necessity for an overall impression being formed of the rival marks in the relevant surrounding circumstances and for those overall impressions then to be compared. There can be cases – see e.g. Vedial and Soffass supra - where the fact-finding body, deploying the proper approach to the overall assessment which the authorities require and having due regard for interdependence and the other relevant surrounding circumstances, is able to conclude that notwithstanding some aspects of similarity, no likelihood of confusion could have been created. But, although I am far from sure I am here differing in any material way from Lewison J, I would hold there to be some form of threshold, albeit a low one. In a case such as the one before me, the threshold, in my judgment, is arrived at as follows. First, overall impressions of the rival marks are formed, paying full regard to all the requirements of the autonomous concept of 4(1)(b) similarity. Next one has to have in mind the types of confusion which are then relevant, namely (as I shall come on to below) those identified in Sabel supra at its para 16. Then the threshold question arises: are those overall impressions such that one can reasonably say that a likelihood of confusion could not thereby be created? If this view of a threshold is to be regarded as my differing from Lewison J. then I would hope to excuse myself by referring to the observation of Sir Andrew Morritt C. in Hachette infra where, at his para 40, he indicated that he saw nothing wrong in describing the test of similarity as a threshold test. Once that low threshold test I have described is passed then the fact-finder is, in my judgment, obliged to go on to consider whether, in consequence, there is a likelihood of confusion – see Soffass para 31. That is not to say that any party can safely decide to assert no more, as to similarity, than that so low a threshold has been exceeded because similarity and the likelihood of confusion are so inter-related that proof of a higher degree of similarity may conduce to a greater willingness in the fact-finder to hold that there is, on the facts, a likelihood of confusion. Hachette Filipacchi Presse SA v Saprotex International (Proprietary) Limited, supra, a decision of Sir Andrew Morritt, Chancellor, of 27th January 2007 has already been cited as authority on the proper approach to an appeal such as this but I do not understand it to throw new light on the concept of similarity. Alecansan SL v OHIM and CompUSA Management Co was decided by the ECJ on 9th March 2007. The ECJ held that the CFI, without making any error of law, had concluded that the goods and services covered by CompUSA’s trade mark were in no way similar to the services covered by Alecansan’s earlier mark – see paras 29 and 38. It was not, contrary to the argument of the defendant in Alecansan, that there was at least a low degree of similarity between the relevant goods and services – see para 18 - but rather – see paras 29 and 38 – that there was no similarity at all. A case where there is no similarity at all (there of goods or services) tells one nothing about cases where there are some aspects of similarity. Indeed, Alecansan was, as I understood it, chiefly cited, by Mr Hobbs, to illustrate how an appeal to the ECJ was limited to points of law only save where the facts or the evidence had been distorted in the Court below – see, e.g. para 31. It is notable, though, that where the ECJ is constrained on that account it is likely to say so, as it said also in T.I.M.E. Art infra but which it did not say, as I have understood it, in Vedial. T.I.M.E. ART v OHIM, Devinlec, a decision of the ECJ of 15th March 2007, was a case in which the ECJ was constrained to point out that appeal to it lay on point of law only – para 51. But – see para 58 – the ECJ did not comment in any way adversely on the holding of the CFI that the impact of the relevant public’s indirect understanding of an earlier mark was not sufficient in that case to outweigh to a large extent the elements of the opposing marks which were visually and phonetically similar. That some aspects of a mark can be outweighed by others, in the course of arriving at an overall impression, tends, if anything, to underline that it never suffices merely to point to some similarity between the rivals; one always has to revert to the autonomous concept of similarity, the “multi-factorial” overall assessment, to which I have referred. The CFI decided Sigla SA v OHIM and Elleni Holding BV Case T-215/03 on 22nd March 2007. I do not understand it to be a case concerned with 4(1)(b) similarity, nor was the even more recent case – 10th May 2007 – Antartica Srl v OHIM and theNasdaq Stock Market Inc. Nor, either, to conclude a chronological mention of the authorities put before me, was re United Kingdom Trade Mark No. 2122181 Intelmark in the name of CPM United Kingdom Limited, Intel Corporation Inc v CPM United Kingdom Limited, unreported, [2007] EWCA Civ 431 in the Court of Appeal, 15th May 2007.

(b) The Law; Article 4(1)(b) Likelihood of Confusion

[32]What types of confusion are such that their likelihood is material? The Directive itself requires only that the confusion should be “on the part of the public” and that its forms include “the likelihood of association with the earlier mark”. I shall, for the moment, leave aside the likelihood of association. The tenth recital to the Directive mentions that the appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark in the market, but relevant confusion has been divided into classes – see Sabel supra at para 16 – where, in relation to arguments as to the likelihood of association, the Benelux governments had in argument divided confusion into three classes. The ECJ in terms neither adopted nor rejected that classification but plainly, without intending that such classification should be exclusive, one can discern a difference between the confusion where the public confuses the sign and the mark in question, spoken of in Sabel as a likelihood of “direct confusion” and where the public makes a connection between the proprietors of the sign and those of the mark and confuses them, spoken of as a likelihood of “indirect confusion”. Narrower or wider classes might emerge but, for the moment, it suffices that confusion should be taken at least to include that form of direct and that form of indirect confusion. The bar against registration requires there to exist (the present tense is used) not confusion itself necessarily but a likelihood of confusion. It is common ground that the relevant date as at which the issue of likelihood is to be adjudged is here the 10th September 2004, the date of esure’s application to register. Presumably proof of actual confusion would be taken to be proof of its having been likely, at all events unless it was demonstrated that, although it had occurred, it could not, unusually, be taken to have been likely to do so. A “likelihood” is not a probability; the requirement is less stringent than that. Learning from a quite different area of the law suggests that where “likelihood” is unqualified by other words (e.g. “more likely than not”) then it requires no more than that there is a real prospect that the material consequence – here confusion – should exist – consider In reHarris Simons Construction Ltd [1989] 1 WLR 368 per Hoffmann J. and the cases cited in the 2007 White Book at note 24.2.3. Such a view would seem also to accord with the fact that in its German form the corresponding requirement of the Directive is that there need be only a “risk” of confusion – see the Advocate-General in Sabel at p I-6195. Just as 4(1)(b) similarity has been developed in the authorities into what I have called an autonomous concept, so also the likelihood of confusion specified in 4(1)(b) has been the subject of a good deal of domestic and, more especially, European Community development, to which I need to turn. This will involve looking afresh at the chronological sequence of cases to which I referred under the heading of 4(1)(b) similarity. At the risk of making a long judgment even longer, and because observations as to similarity and confusion are often run together, I shall sometimes repeat passages in authorities which have already been cited. Because, in a case such as this, a “likelihood of association” within the meaning of 4(1)(b) is, as I shall next explain, no bar to registration unless there is also a 4(1)(b) likelihood of confusion and because, conversely, likelihood of confusion suffices on its own, I do not need separately to consider in any detail for 4(1)(b) purposes just what is a likelihood of association. That emerges from paragraphs 18 and 22 of the judgment of the ECJ in Sabel supra where it is made clear that the likelihood of association as referred to in 4(1)(b) is not an alternative to the likelihood of confusion “but serves to define its scope”. Thus if there is no likelihood of confusion on the part of the public then 4(1)(b) represents no bar to registration; in such a case one does not need to go on to ask whether there was a likelihood of association. 39. The ECJ in Sabel referred at its paragraph 22 to the tenth recital to the Directive, to which I have already referred, and then continued, so far as relates to the likelihood of confusion, as follows:- “The wording of Article 4(1)(b) of the Directive - '... there exists a likelihood of confusion on the part of the public ...' - shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.”[33]At paragraph 24 the ECJ continued that the more distinctive the earlier mark the greater would be the likelihood of confusion:
“… It is therefore not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. 25. However, in circumstances such as those in point in the main proceedings, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion. 26. The answer to the national court's question must therefore be that the criterion of 'likelihood of confusion which includes the likelihood of association with the earlier mark’ contained in Article 4(1)(b) of the Directive is to be interpreted as meaning that the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of that provision”
. The ECJ would seem thus to have adopted the opinion of Advocate-General Jacobs at I-6213 para 64(2) that:
“The registration of a mark cannot be opposed merely on the ground that, because the idea behind it and another mark is the same, there is the risk that the public will associate the two marks in the sense that one will simply bring the other to mind without a likelihood of confusion as described above”
. The answer given in the ECJ’s para 26 was related to the position, described in para 25, where the earlier mark is not especially well-known and has little imaginative content. Neither of those observations would be apt in the case of Direct Line’s telephone on wheels.[34]Lloyd Schuhfabrik supra brought out that the notion of interdependence to which I have referred in relation to similarity was appropriate also to the global appreciation of the likelihood of confusion. At paragraph 22 in the FSR Report the ECJ continued:
“It follows that, for the purposes of Article 5(1)(b) of the Directive, there may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive (see, to that effect, Canon, paragraph 19). 21. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of May 4, 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999] ECR I-0000, paragraph 49). 23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51).”
[35]At its paragraph 26 the ECJ continued: “In addition, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components… The wording of Article 5(1)(b) of the Directive — ‘... there exists a likelihood of confusion on the part of the public ...’ — shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details”.[36]For the purposes of that global appreciation, continued the ECJ in Lloyd Schuhfabrik: “…the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect…. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question”.[37]In Marca Mode supra the ECJ, at its para 39, referred to the particularly distinctive character of an earlier mark leading to an increase in the likelihood of confusion. It also brought out, at para 39, that a proven likelihood of association did not lead to a presumption of a likelihood of confusion. To that extent it was merely echoing Sabel but it continued:
“… the Court referred by implication to the assessment of evidence which the national court must undertake in each case pending before it. It did not excuse the national court from the necessary positive finding of the existence of a likelihood of confusion which constitutes the matter to be proved”
. Thus it emphasised the need for an assessment of the evidence by the National Court. One could not presume the existence of a likelihood of confusion simply because the high degree of distinctiveness of a mark led to a likelihood of 4(1)(b) association. It could not be made clearer but that the likelihood of confusion is required to be substantiated by evidence put before the national court in a conventional way.[38]I do not understand Sihra’s Trade Mark Application to be a case that materially adds to the European cases already cited as to confusion, nor does Vedial SA supra. Home-Tek International’s Applications supra, by its reference in para 25 to Sergio Rossi SpA v OHIM (1st March 2005), underlined that where the goods concerned have some points in common, and in particular the fact that they were sometimes sold in the same sales outlets, (and the same, correspondingly, must be applicable where it is services that have points in common and are sometimes made available through the same outlets) the differences identified between the goods or services may not be so great as to rule out, by themselves, the possibility of a likelihood of confusion. But the force of that observation in Sergio Rossi is plainly diminished if the services are never made available through the same outlets. The opinion of Advocate-General Colomer in Muehlens GmbH & Co KG supra, a case where the similarity asserted was phonetic or aural, included, at para 26, the observation that whereas it had been asserted below that consumers perceived the signs with their eyes and not solely or preponderantly with their ears, the applicant had “produced no evidence whatsoever to support its thesis”. The opinion illustrates that such issues are not left as a matter of, so to speak, first impression by the fact-finding tribunal but are required to be proved by evidence in the ordinary way. I do not understand Soffass supra to add anything, beyond its para 31 cited above, on the subject of the likelihood of confusion although, on the subject of the global assessment of the likelihood of confusion, it adds the BASS case [2003] ECR II-4335 to the authorities relied upon on the subject. Picasso supra introduces no new relevant considerations that relate to the likelihood of confusion. 02 Holdings Ltd supra at its paragraph 122 contains a very helpful summary of the law on the likelihood of confusion which summary, in that case, was common ground between the experienced counsel there instructed; it was accepted by the Judge. Of the nine separate features included within that summary only the ninth has not already been touched on in this judgment but the ninth, brought out by reference to Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507; [1999] RPC 117 ECJ is that if the association between the marks causes the public wrongly to believe that the respective goods or services come from the same or from economically linked undertakings, that is to be regarded as a relevant likelihood of confusion. L’Oreal SA v OHIM supra, whilst, as I have already observed, more concerned with the likelihood of confusion than it is with the concept of similarity, in fact, as I read it, adds nothing material to the authorities already mentioned on the subject. It describes the applicant in that case as having misconstrued two concepts, which it describes in para 43, but I do not understand a confusion between those two concepts to be argued to have arisen in the case before me. In Nike International supra, as I have already noted, the point is made that where there is an unusually high consciousness of brands then the public, being, on that account, unusually attentive, might be expected to tolerate a higher degree of conceptual similarity before a likelihood of confusion emerges. That point apart, Nike does not add materially to the pre-existing authorities on the likelihood of confusion. I mention the point as I would not take it (and there was no evidence below) that insurance or financial services of the kind supplied by the parties are for present purposes areas of high brand consciousness; so long as each supplier is reputable, as in the case before me, one might well expect the consumer to care relatively little whether the service-provider was the one or the other, with choice ultimately dependent on the respective prices and detailed features of the services on offer. In L’Oreal SA v Bellure NV supra Lewison J. had no need to depart from or to add to the summary of principles which had been common ground between counsel before him in his earlier case of 02 Holdings supra. So far as concerns likelihood of confusion, the Bellure case accordingly adds nothing further to the law as already stated. In Hachette supra the Hearing Officer had held, by reference to the appropriate ECJ authorities – see paragraphs 14, 16 and 19 of the Chancellor’s judgment – that there was no likelihood of confusion. The appeal to the Chancellor failed because the appellant was unable to find the necessary error of principle in the Hearing Officer’s decision. The Chancellor’s judgment did not therefore need further to examine the likelihood of confusion beyond accepting that the Hearing Officer’s understanding of the authorities on the subject had been without error of principle. The case accordingly adds nothing new on the subject nor, either, does Alecansan supra. 46. In T.I.M.E Art supra the CFI had – see the judgment of the ECJ at para 13 – held, inter alia, as follows:
“It is true that, according to case-law, a conceptual difference between the marks at issue may be such as to counteract to a large extent the visual and aural similarities between those signs ([Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335], paragraph 54). However, for there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately”
. The marks in issue in that case were “QUANTUM” and “Quantième”. The CFI had held – see the ECJ at para 50 – that the relevant public would not immediately attribute a precise meaning to the verbal elements of the opposing marks. The requirement that at least one of the marks in question had, from the point of view of the relevant public, a clear and specific meaning such that the public was capable of grasping it immediately was not there satisfied. In concluding as it had, held the ECJ, the CFI had been carrying out an appraisal of a factual nature and accordingly, as appeal to the ECJ was only on a point of law- see ECJ at para 51 - that aspect of the appeal had necessarily to fail. But I do not understand the ECJ to have indicated that the CFI had been wrong in law in reminding itself that visual and aural similarities can be overborne by conceptual differences, at any rate where at least one of the marks has, from the point of view of the relevant public, a clear and specific meaning such that the public is capable of grasping it immediately. Indeed, the ECJ regarded that proposition as supported by Muehlens GmbH & Co KG supra – para 35 – that being the case in which, as I have pointed out, I have had only the opinion of the Advocate-General put before me. In both the case of Direct Line and of esure the mark and sign offers, in context, a clear and specific meaning which the public, I would expect, would immediately grasp, namely that, by telephone (Direct Line) or on-line by way of a computer (esure) respectively, a service from the supplier could be directly obtained.[39]Sigla is chiefly concerned with Article 4(4)(a) (and hence section 5(3)) and none of Antartica Srl, the “Loaded” case, Nasdaq or INTELMARK, supra, needed to add anything on the subject of 4(1)(b) likelihood of confusion. I therefore turn to the third main heading of law with which I am concerned, namely reputation, advantage and detriment.

The Law: Reputation, Unfair Advantage & Detriment

[40]As I mentioned earlier, the present sense of the Directive is best found in section 5(3) of the 1994 Act which provides:- “ (3) A trade mark which—(a) is identical with or similar to an earlier trade mark …(b) […] , shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark or international trade mark (EC), in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.” It has not been argued that the basic requirement of similarity between mark and sign in this subsection differs materially from that in Art 4(1)(b) so that, for immediate purposes, I need not add anything on the subject of similarity save a mutatis mutandis variation in the description of the threshold. Nor can it be doubted but that the Direct Line mark has a reputation in the United Kingdom. As for the words “without due cause”, they require no examination for present purposes.[41]What does require more study are the words “would take unfair advantage of … the distinctive character or the repute of the earlier trade mark” and the words “or be detrimental” to that distinctive character or repute. I have no need to go yet again through the whole sequence of the cases put before me. It suffices that I should start with the decision of Lewison J. in 2006 in O2 Holdings Ltd v Hutchison 3 G Ltd, supra [2006] RPC 699. At his paragraph 73 Lewison J., after a review of chiefly ECJ authorities and remarks as to distinctiveness, concluded:
“It is not necessary for the average consumer to be able to identify the goods or services as originating from a particular undertaking in the sense of being able to name the undertaking concerned. It is enough that the average consumer knows that some statement about trade origin or quality of goods or services is being made”
. Neither a likelihood of nor confusion itself is here required – Adidas–Salomon AG v Fitnessworld Trading Ltd [2004] Ch 120 at paras 28 and 29 and see also L’Oreal SA v Bellure NV supra at para 112.[42]The notion of “unfair advantage or detriment to the distinctive character of an earlier mark” is explained in case R308/2003-1 Mango Sport System Srl Socio Unico Mangone Antonio Vincenzo v Diknah Sl [2005] ETMR 5[19] in a passage which Lewison J. adopts in Bellure supra, as follows:
"As to unfair advantage, which is in issue here since that was the condition for the rejection of the mark applied for, that is taken when another undertaking exploits the distinctive character or repute of the earlier mark to the benefit of its own marketing efforts. In that situation that undertaking effectively uses the renowned mark as a vehicle for generating consumer interest in its own products. The advantage for the third party arises in the substantial saving on investment in promotion and publicity for its own goods, since it is able to "free ride" on that already undertaken by the earlier reputed mark. It is unfair since the reward for the costs of promoting, maintaining and enhancing a particular trade mark should belong to the owner of the earlier trade mark in question."
Lewison J. added, at para 144 in Bellure, a passage that I would respectfully adopt, as follows: “The mere fact that one product has a free ride on another does not necessarily found liability. A supermarket cola may sell because of the taste for cola engendered by the promotion of Coca-Cola and Pepsi-Cola. Likewise a supermarket packet of cornflakes may sell because of the promotion of cornflakes by Kellogg. But if the respective marks and signs do not have the necessary degree of similarity, that kind of free riding is legally permissible. Thus it is the similarity between sign and mark, not similarity between products, which is the key”.[43]As for detriment, in Bellure supra Lewison J. at his para 145 adopted passages from Sigla at para 62 in the Board of Appeal which ran as follows: “42. Hence, once an image associated with a trade mark which has a reputation has been shown to exist, the fact that the contested sign is detrimental to this image, must still be demonstrated. 43. It must, therefore, be shown that the trade mark is sullied or debased by its association with something unseemly. This may happen when the applied for trade mark, to which the mark with reputation may be associated, is used, on the one hand, in an unpleasant, obscene or degrading context or, on the other hand, in a context which is not inherently unpleasant but which proves to be incompatible with the trade mark's image. In all cases, there is a comparison which is injurious to the trade mark's image and what is known in English as dilution by tarnishment". Lewison J. continued with a quotation from Adidas that tarnishment described the situation where:- “…the goods for which the infringing sign is used appeal to the public's senses in such a way that the trade mark's power of attraction is affected".[44]That, as it seems to me, admits, as also do references in later authorities, as relevant forms of detriment, forms going well beyond debasement or sully by “association with something unseemly”. Lewison J. also referred to the type of detriment called “blurring” in his para 147 in Bellure. He concluded, and I respectfully adopt his conclusion at para 148, that: “In other words, there must, in my judgment, be a causative link between the application of the sign and the tarnishing or blurring of the mark complained of”.[45]The ECJ requires, as a sine qua non of a finding of material unfair advantage or detriment, not only, as I read it, that causative link but a further one. Section 5(3), like the Directive, does not expressly require any particular link although a causative link of at least a “but for” kind corresponding to that to which Lewison J. referred – para 79 – is surely required by implication. In the Spa-Finders case in the CFI on 25th May 2005, Case T-67/04, an absence of a necessary link was, unsurprisingly, found as between, on the one hand, a travel arrangement company, Spa-Finders Ltd, seeking to register “SPA –FINDERS” as to Class 16 printed papers and Class 39 travel agency services and, on the other, opposition from the owners of earlier marks “SPA” and “LES THERMES DE SPA” in relation to mineral waters, Class 3 laundry cleaning and cosmetic goods and the jumble of services described in Class 42. The CFI in “SPA-FINDERS” referred back to Adidas-Salomon AG v Fitnessworld supra where, at its paragraphs 29 and 30, the ECJ had spoken of a link, albeit not one involving confusion, made by the public between the mark and the sign and arising out of a certain degree of similarity between them, which was required to be tested for in the same “global” way as was Article 5(1) likelihood of confusion. That form of link thus established is what was described in SPA- FINDERS – para 41 – as an essential condition and it is, as it seems to me, a form which goes beyond and is additional to the need for a causative link between the use of the sign and the relevant unfair advantage or detriment. I shall later refer to this form of link, required if section 5(3) is to be satisfied, as “the Additional Link”. 54. At all events where the causative link and the Additional Link are not plain and obvious, they are, as the quotation from Sigla in the Board of Appeal indicates, required to be proven. The Sigla case as it was at the time when Lewison J. heard Bellure went to the CFI where, in the Court’s decision of 22nd March 2007, there is further guidance on the application of the provisions found in Article 8(5) of Regulation No. 40/94 corresponding to Article 4(3) and to section 5(3). Thus at para 35 of the March 2007 judgment one finds:
“Consequently, Article 8(5) of Regulation No 40/94 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered”
. A fortiori, I would expect, where the services are identical.[46]In para 37 the CFI ruled:
“So far as concerns, first, detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 34 above, paragraph 43). That risk thus refers to the “dilution” or “gradual whittling away” of the earlier mark through the dispersion of its identity and its hold upon the public mind (Opinion of Advocate-General Jacobs in Adidas-Salomon and Adidas-Benelux, paragraph 36 above, point 37)”
. There was further explanation in paragraphs 39 and 40: “39. As regards, secondly, detriment to the repute of the earlier mark by the use without due cause of the mark applied for, it must be pointed out that such detriment is made out where the goods or services covered by the mark applied for may appeal to the public senses in such a way that the earlier mark power of attraction is diminished (SPA-FINDERS, paragraph 34 above, paragraph 46). The risk of that detriment can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of its being identical or similar to the mark applied for. 40. Lastly, the concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and “free-riding on the coattails” of a famous mark or an attempt to trade upon its reputation (SPA-FINDERS, paragraph 34 above, paragraph 51). In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation”.[47]At its para 43 the Court turned to the nature of the evidence which an opposing party, as proprietor of the earlier mark with the reputation, must put forward in support of the ground for opposition referred to in Article 8(5) of Regulation No. 40/94. Here proof is not necessarily to be limited to facts properly put forward in evidence in the sense that – see para 45 – the Court can have regard to facts which are well known in the sense of being likely to be known by anyone or which may be learned from generally accessible sources. Para 46 of Sigla in the CFI makes it plain that “the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must however adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (SPA-FINDERS, paragraph 34 above, paragraph 40)”. In para 47 of Sigla the Court reiterated the need for the existence of a link being demonstrated between the mark applied for and the earlier mark and reiterated that the existence of that link must be appreciated “globally”, taking into account all factors relevant to the circumstances of the case. The Court added that “In that regard, the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that detriment has been caused to it”. 57. Sigla continued in its para 48:- “In the light of the considerations in General Motors, paragraph 47 above, paragraph 30, which are applicable to the present case by analogy, it is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to or unfair advantage being taken of the mark cited in opposition by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end. However, it cannot be assumed that this is always the case. Indeed, it is possible that the mark applied for does not, at first sight, appear capable of giving rise to one of the three types of risk covered by Article 8(5) of Regulation No 40/94 with respect to the earlier mark with a reputation, even though it is identical with or similar to the earlier mark. In those circumstances, the opposition must be rejected as unfounded unless such a non-hypothetical, future risk of detriment or unfair advantage can be established by other evidence which it is for the opposing party to put forward and prove”.[48]In Antartica Srl, the NASDAQ case, on the subject of what the opposer must, in this regard, establish, the CFI added, on the subject of prima facie evidence of a future risk, that it could be established: “…in particular, on the basis of logical deductions resulting from an analysis of the probabilities and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case”. - see its para 54.[49]Finally, the Court of Appeal in the Intelmark case supra set out at length the passage from Advocate-General Jacobs’ opinion in Adidas-Salomon on “dilution” at para 18 of the judgment of Jacob LJ. In Intelmark the Court of Appeal told the parties that it intended to refer questions to the ECJ. Jacob LJ. indicated how he would answer the questions; Mummery and Keene LJJ. agreed. At para 29 Jacob LJ. indicated:- “If a trade mark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services. The average consumer is a reasonably sensible individual. He is used to lots of trade marks in different fields – some of which may resemble trade marks for other fields. In this country, for example, for a long time Jif lemon juice and Jif washing up liquid co-existed happily, not to mention Jiffy for padded bags and condoms. Sometimes, but perhaps not surprisingly, trade mark owners of big brands want more protection than they really need”. That passage, of course, was directed to where the goods or services are dissimilar. The risk of relevant unfair advantage being taken, perhaps also of relevant detriment being suffered, is, I would think, likely to be greater where the goods or services are identical.[50]That concludes the review of the three main areas of the law with which I have been concerned and I must now turn to examining whether, in his decision, the Hearing Officer, if I take that review to be the state of the law on the subjects, committed some material error of principle in the course of arriving at his conclusions. First, I shall simply state what his conclusions were.

The Hearing Officer’s conclusions

[51]Before the Hearing Officer, Direct Line had opposed esure’s registration under three headings namely:-(i) Under section 5(2)(b) of the 1994 Act, effectively corresponding to Article 4(1)(b);(ii) Under section 5(3) – effectively Article 4(3) as construed by the ECJ; and(iii) Under section 5(4)(a) of the 1994 Act – effectively, passing off. In the course of argument before him that third heading was not pressed as it added nothing to the objections under Article 4(1)(b) and section 5(3) – see his decision at para 62. Accordingly the Hearing Officer made no decision as to section 5(4)(a) – see his para 187. But the oppositions under (i) and (ii) above both succeeded. Mr Silverleaf argues that, in relation to each, there are plain errors of principle in the Hearing Officer’s decision. In a phrase which he frequently used, Mr Silverleaf said that the Hearing Officer had approached comparisons, in particular, “at the wrong level of generality”. It is to those alleged errors of principle that I now turn.

Suggested Errors of Principle; Similarity

[52]The Hearing Officer respectfully agreed with Lewison J’s remarks in Bellure supra that there is no minimum threshold as to similarity (or, at least, none such as Mr Wyand QC had argued for in the Bellure case). I have no reason to think that the Hearing Officer had seen Mr Wyand’s Skeleton Argument or otherwise knew of just what threshold Mr Wyand had argued for. Mr Silverleaf urges that the Hearing Officer here erred in principle. Mr Hobbs took that to be Mr Silverleaf’s argument here and so do I. For the reasons I have given, unlike the Hearing Officer, I would hold that there is the threshold which I have described. 63. At his para 114 the Hearing Officer concluded:
“In my view, a distinctive feature of both marks is the unusual juxtaposition of wheels attached to (albeit recognisably different) electronic communication devices. I find that this gives rise to a recognisable similarity between the marks”
. But if the threshold question is as I have indicated – see para 46. above – the threshold question is more a matter of law and first impression rather than one requiring detailed analysis or evidence and, if the threshold is as I have taken it to be, it is in my judgment here satisfied; I would not be able to say that duly-arrived-at overall impressions made by the rival marks are such that one could reasonably say that a likelihood of confusion could not thereby have been created. Despite the differences – and there are several – between the phone on wheels and the mouse on wheels, the relevant services are identical and both the sign and the mark are indicators of a means of making contact and doing business with the provider of those identical services and in both cases (against all experience) black road wheels have been added to that means of communication and give it the appearance of a vehicle. As a matter of first impression I would take the low threshold to have been cleared.[53]Mr Silverleaf draws attention to the passage in the Hearing Officer’s paragraph 110 where he said:
“The requirement for similarity is therefore passed when there is any visual, aural or conceptual similarity between marks which is likely to be recognised as such by an average consumer.”
He had said much the same in his paragraph 108; once there was that degree of similarity then the Tribunal was obliged to go on to consider the other factors identified in section 5(2)(b) or section 5(3) of the 1994 Act. As will have been seen from my observations on thresholds, I take a different view but it is not, as it seems to me, a difference that can here be magnified into a material and clear error of principle. The difference in approach would only have been a material error of principle if, upon adopting my view as to the threshold, I had taken the view that the threshold had not been equalled or exceeded. But, as I have indicated, in my view the threshold is low, as I have described it, and was exceeded. The Hearing Officer, in my view, was thus obliged to go on to consider whether there was a likelihood of confusion in the manner that he did and, equally, to consider questions as to unfair advantage and detriment, as I shall come on to, as he did.[54]I would add this (as I apprehend Mr Silverleaf asserted error in principle as to the Hearing Officer’s response to conceptual similarity): it is difficult to elevate matters essentially of weight and degree into ones of principle but, even if one were to take out of the Hearing Officer’s evaluation his concept of desk top electric communication devices as a feature common to both, I would, having regard to other similarities between the mark and the sign (especially if the mouse could be used in red with black wheels) nonetheless take the low threshold to have been exceeded. If that is right then I next need to look into whether such similarity as there was, as globally appreciated in the way described in the authorities which I have touched upon in paragraphs 24 et seq. above, caused a likelihood of relevant confusion. Suggested Errors of Principle; Likelihood of Confusion[55]That likelihood was very much a matter for evidence and, as to its evidence, Direct Line quickly ran into difficulties. Direct Line had chiefly relied, as I have mentioned, upon a full-scale public survey professionally conducted between the 6th and 13th July 2005. In its evidence and argument, esure launched a sustained attack on that survey. esure’s main attack was based on the possibility, to put it no higher, that Direct Line’s very extensive advertisement campaign, begun after the relevant date, the date of esure’s application to register, and continued at least down to the dates of the surveys, and showing a phone on wheels accompanied by its “friend”, the mouse on wheels, had, by the time of the surveys, so corrupted or infected what otherwise might have been the public’s view of a mouse on wheels on its own as to make the surveys worthless. The Hearing Officer, for reasons I shall deal with later, concluded that such were the uncertainties inherent in the surveys that they could not be taken by him to be a reliable indication of what an average consumer would have thought at the date of the application. In consequence he approached the matter on the basis that the survey evidence was of no assistance – see his paragraph 94. I shall, for the moment, take it that his rejection of survey evidence involved no error of principle. 67. The Hearing Officer, of course, looked at a number of similarities and dissimilarities. The esure mouse had a low and sleek profile whereas the Direct Line telephone was more angular and old fashioned; the tyres and tread on the esure mouse were like those on a road car whereas the tyres on the Direct Line telephone were more tractor-like; the esure mouse had the letter “e” in the centre of each wheel and there were eyes on the top of the mouse. But the presence of the letter “e”, he said, was not a strong distinguishing feature and the eyes were not always visible and were not a strong distinguishing feature either. Such minor factors were overlaid by the need, consistent with authority, to form an overall impression. There was one easily recognisable and powerful difference to which he alluded in his para 129 in the following terms:
“Nevertheless, I do not believe that an average consumer, who is deemed to be reasonably observant and circumspect, making a considered purchase such as an insurance policy, would fail to notice the differences between DL’s telephone on wheels and esure’s computer mouse on wheels marks. There are a number of detailed differences, but the most telling one is that both marks are based upon well known and easily recognised desk top communication devices which consumers are able to tell apart. I therefore reject any claim of a likelihood of direct confusion”
. His reference to direct confusion was a reference to confusion between the sign and the mark as spoken to in Sabel supra at paragraph 16 – see para 54 above.[56]The Hearing Officer accordingly turned to indirect confusion, where the public makes a connection between the proprietors of the sign and those of the mark and confuses them. He accepted in his paragraph 133 that the detailed styling of the computer mouse does not contribute to any “family resemblance” between the esure sign and Direct Line’s telephone mark and continued, at his paragraph 134, as follows:- “The dominant and distinctive feature of both marks is that they consist of wheels attached (in the same way) to an object which a) does not usually have wheels, and b) represents one of the two main channels of doing business with a direct seller of financial services and insurance. The fact that one mark would be recognised as being a telephone on wheels, whereas the other would be recognised as a computer mouse on wheels, does not mean that consumers wouldn’t recognise that these devices represent alternative channels of communication with a direct seller. The modest degree of visual similarity between the marks (essentially the wheels and the vehicular appearance) is therefore enhanced by a greater degree of conceptual similarity. In my view, the visual and (particularly) conceptual similarities between the dominant and distinctive feature of the marks will have a greater impact on the average consumer than the detailed visual and aural differences”.[57]The Hearing Officer posed the question to himself, would an average consumer of the services in question, who was familiar with Direct Line’s established telephone on wheels mark, have believed that the mark applied for was a new variant of Direct Line’s established mark? esure had argued that, after all, Direct Line had been content to continue with its use of the telephone on wheels mark for five years after it had begun trading on the internet. Why should Direct Line, Mr Silverleaf had asked, be taken as having adopted a new mark to identify its new internet business, years later? Indeed, Mr Blackett, Group Deputy Chairman of Interbrand Group Limited, an international branding consultancy, gave evidence on behalf of Direct Line to the effect that it would be extremely unusual for a business with such a valuable mark as Direct Line’s telephone on wheels mark to drop it in favour of another. But, then raised the Hearing Officer, might it not be that the esure mark would have been regarded as a development of the telephone on wheels mark, reflecting the changing tools for conducting business, once on-line quotations became predominant? Might it not be not so much that Direct Line, he asked himself, had dropped its telephone on wheels mark but rather that the mouse on wheels should be intended to supplement the telephone on wheels mark? The Hearing Officer continued, at his paragraph 139, as follows: “DL’s position as the market leader in the direct insurance market, and the fact that it was up until the date of esure’s application, the only company in the relevant market sector using a communication device on wheels as a mark, are further reasons for supposing that an average consumer might have been confused into thinking that the mark applied for was a mark of DL, or at least a mark used by an economically linked undertaking. There is in fact some evidence that some of the larger insurers are behind the services offered by a number of other undertakings. However, there is no evidence that consumers are generally aware of this and I therefore attach no weight to this evidence”.[58]Bearing in mind that the Direct Line mark was invariably in red with black wheels and (as I shall need to come on to) that the esure application, if granted, would allow esure also to use red with black wheels, the Hearing Officer concluded: “The use of the mark applied for in that colour would plainly serve as a further pointer to DL. Taking all of the above into account, I find that at the date of the application, the use of the mark applied for in the colour red would have been likely to cause indirect confusion with DL’s earlier mark. As the use of the mark in that colour is an example of normal and fair use of the trade mark, I find that the objection under s.5(2)(b) succeeds”.[59]It is plain from that summary that, crucial to the Hearing Officer’s conclusion, was his view that an average consumer might have been confused into thinking that the mark applied for was a mark of Direct Line or at least a mark used by an economically linked undertaking. That view could be arrived at without error of principle only if it was based upon evidence laid before the Hearing Officer and accepted by him or was such that it could properly be inferred from that body of evidence. Without such evidence there would have been an error of principle in the sense that the Hearing Officer would have taken into account something which he had no sufficient reason to take into account. Was there, then, evidence before the Hearing Officer such that he could have concluded therefrom as he did? As he laid aside the survey evidence altogether the answer can only be found in evidence other than in the surveys. Was there any such sufficient evidence? 72. Relatively few of Direct Line’s witnesses spoke to the likelihood of confusion in the indirect sense of an average consumer thinking that esure’s mark as applied for was a mark either of Direct Line or at least one used by an economically linked undertaking. Mr Blackett’s written evidence on the point was summarised by the Hearing Officer as being that:- “There is a likelihood that because of the similarities between the esure mouse on wheels and the DL telephone [on] wheels, a significant number of the public would think that the esure mouse [on] wheels device was somehow connected with DL”.[60]But the reference to the mouse on wheels being “somehow connected” to Direct Line could, of itself, prove neither that it was a mark of Direct Line, nor a mark used by an economically linked undertaking nor that the public were thereby confused. Mr Blackett had also considered that even if there was no such confusion there was a likelihood of association but, for the reasons given – see paras 58, 59 and 61 above - under this 4(1)(b) hearing – a likelihood of association without there being material confusion would not be a sufficient ground for refusing registration. The Hearing Officer held that Mr Blackett (who, as was the case with all of the witnesses who gave oral evidence before the Hearing Officer, was found by the Hearing Officer to be a credible and truthful witness who had done his or her best to answer the questions put in a straightforward and helpful manner) had largely stood by what he had said in writing when he came to be cross-examined. But the Hearing Officer’s assessment of Mr Blackett’s oral evidence did not add anything further, in relation to this particular class of confusion, to what his written evidence, inadequate for immediate purposes, had said. Miss Berg and Miss Melling, solicitors employed by Direct Line’s solicitors, had conducted very small surveys but they were not independent professional surveys by experts in the field and were conducted only after Direct Line had begun its own very extensive use of a mouse in its advertising. esure’s own expert on surveys gave written evidence that Miss Berg’s and Miss Melling’s surveys were too small to be statistically significant. Each of Miss Berg and Miss Melling was unable to rule out the possibility that Direct Line’s poster advertisements featuring its telephone on wheels mark accompanied by its “friend”, the mouse on wheels, had been displayed on bus stops in the streets in which the interviews were conducted. The risk of their results being corrupted by Direct Line’s campaign was thus not to be overlooked. Even if the Berg and Melling mini-surveys had been otherwise without blemish it would seem that they were therefore vulnerable to the very same defects as rendered the main professional survey nugatory. In the event, the Hearing Officer placed no reliance on any of the surveys. That leaves the evidence of Mr Ross, Managing Director of Direct Line up to the 31st July 2005. His evidence was held by the Hearing Officer to have shed no light whatsoever on consumers’ perception of the respective marks. Militating against such confusion were the Hearing Officer’s findings that there was a “telling” difference in that the desk-top respective communication devices were easily recognised and seen to be different by consumers in the sense that one offered communication by telephone and the other by computer. Moreover those two methods of communication were, on the evidence, alternative channels of communication (and to that extent the semantic content of the two marks was hardly analogous). The evidence also was that a supplier, as I have mentioned, would be extremely unwilling to give up use of a mark as valuable as Direct Line’s mark had become. The matter was far too finely balanced to be such as could be concluded by a first impression; clear evidence or, at lowest, a plainly reliable inference as to confusion was needed. Yet, once he had set aside the survey as nugatory, the Hearing Officer had none before him upon which his conclusion could be based. He could not, in other words, have concluded as he did under 4(1)(b) (section 5(2)(b)) without error of principle. I am thus enabled to arrive at my own conclusion on the 4(1)(b) likelihood of confusion. At this juncture I have regard to the fact that the onus, as I have described, is upon Direct Line and to the absence, as I have held it to be, of material evidence of the likelihood of confusion. Splitting the marks down into their respective visual, aural and conceptual elements, I find there to have been no aural similarities and that the visual differences (even if one considers the mouse on wheels being in red or in red with black wheels) as to be so clear and so readily assessable as differences by an average consumer that such a person would not take the respective proprietors of them to be one and the same or, indeed, as economically related to one another but rather that they were more likely to be rivals in one and the same service industry. As for the conceptual element, that, as it seems to me, only goes to support that view; the idea behind the one is that business can be done direct with the provider by telephone, of the other by on-line communication. They are likely to be perceived as alternatives. The conceptual element serves to bolster the difference which the visual element suggests. That was illustrated by the view, given in evidence, that Direct Line’s phone was its own worst enemy, suggesting, as it did, a relatively less modern and less convenient form of communication if the consumer’s intent was to obtain an insurance or financial service, a view underlined by Direct Line’s later use of the combined telephone and mouse. There was, in my judgment, no proven likelihood of relevant confusion. I must therefore allow esure’s appeal so far as concerns Article 4(1)(b). At this stage, and not before, I am entitled to find some comfort from the fact that the view I have arrived at accords with the preliminary view of the Registrar. Rejection of Direct Line’s Main Survey Evidence[61]My view that the Hearing Officer erred in principle in considering, as he did, that a relevant likelihood of confusion was sufficiently proved by the evidence which he accepted is heavily dependent upon the Hearing Officer being right in his rejection of evidence of Direct Line’s main and lesser surveys. In its Respondent’s Notice Direct Line raises whether the Hearing Officer had been right to reject, as he did, the main survey and Mr Hobbs built upon that opening in oral argument. In his paragraph 90 the Hearing Officer had stated, with my emphasis:- “In this case I am satisfied that the procedural defects identified in the way that the survey was conducted do not undermine Mr Phillips’ assessment of the levels of public association shown in the JMA survey”.[62]That observation is plainly limited to the procedural defects in the survey not invalidating it, but the Hearing Officer then went on to deal with the potential of Direct Line’s pre-survey advertising campaign using its familiar phone with wheels mark but now with its “friend”, the mouse on wheels, alongside, to corrupt the level of association in the public’s mind between any mouse on wheels and Direct Line’s long-established phone on wheels mark. esure (not, as the Hearing Officer recorded it, Direct Line) had instructed Mr Philip Malivoire, a Director of GfK Consumer, the consumer division of GfK NOP and an expert in the field. Mr Malivoire, along with all other of esure’s witnesses, was not required to be cross-examined, and he had asserted, as the Hearing Officer records at his paragraph 46(a), that the timing of the surveys, that is to say both the mini surveys and the main survey, alongside Direct Line’s advertising campaign featuring its own computer mouse on wheels undermined any value that the surveys might have had in measuring association between the mark applied for and Direct Line’s telephone on wheels mark prior to the commencement of that advertising. The Hearing Officer expressed no misgivings of substance as to Mr Malivoire’s evidence and so the Hearing Officer thus had expert evidence, for him to assess, to the effect that the surveys were rendered valueless. It could not thus reasonably be said that Direct Line’s campaign could not possibly have had any muddying effect and thus it was for the Hearing Officer as the fact-finder to weight up the evidence on the issue. At his para 94 he concluded that:- “The reality is that no one can say what effect the parties’ post-application advertising had on the results of the mini surveys and the main JMA survey. I therefore regard the advertising factor as introducing too much uncertainty as to permit the results of the surveys to be taken as a reliable indication of what an average consumer would have thought at the date of the application. Consequently, I have approached the matter on the basis that the surveys’ evidence is of no assistance”.[63]There was, as it seems to me, no reason why the Hearing Officer should not distinguish between the procedural defects in the survey and the more substantive defect to which he there referred and no reason, notwithstanding that the procedural effect did not on its own render the survey worthless, that he should not find that the substantive defect did have that result. Mr Hobbs is here undone by the very argument which he himself advanced as to what is the appropriate test in relation to an appeal such as this; the respect to be paid to the Hearing Officer’s decision is such that, in the absence of an error of principle, I must, like the Hearing Officer, conclude the survey evidence was of no assistance. I have not been able to detect any error of principle in the Hearing Officer’s reasoning on the issue and so the argument raised by the Respondent’s Notice on this issue does not, in my judgment, weaken my earlier conclusion that no relevant likelihood of confusion was sufficiently proved by such evidence as the Hearing Officer did accept. Despite the Hearing Officer’s view that the surveys were of no assistance, esure claimed before me to have found valuable nuggets amongst what it otherwise regarded as dross. I have not seen it right that esure should be permitted to go prospecting in that way; the Hearing Officer’s finding was, in effect, that the survey evidence was totally rejected and of no assistance either way. Suggested Errors of Principle; Unfair Advantage or Detriment[64]I have not understood that Direct Line successfully put in issue esure’s motives in choosing to use a mouse on wheels in the sense of its looking for a free ride or to cause detriment to or to take unfair advantage of the distinctive character or repute of the phone on wheels. 78. Mr Hobbs had submitted to the Hearing Officer that a mere risk of detriment or unfair advantage was sufficient to engage section 5(3). The Hearing Officer accepted that the Court was concerned to distinguish between a real risk and a hypothetical one. But he went on (with my emphasis) as follows:
“In the UK the standard of proof required in civil proceedings is generally to show that, on a balance of probabilities, a given event occurred or will occur”
. That, as it seems to me, poses a requirement more stringent than that a distinction is required between a real risk and a hypothetical one. When the Hearing Officer, accordingly, went on to say that the question he had to answer was whether use of esure’s mark would, on the balance of probabilities, have one or more of the effects specified in the section, he was thus asking himself whether, on the balance of probabilities, it was shown that relevant unfair advantage or detriment would occur. That, as it seems to me, puts the matter too highly; it suffices – see my para 87 above – that a non-hypothetical future risk of detriment or unfair advantage is put before the Court, the onus, in that respect, being here upon Direct Line.[65]As for proof of the Additional Link, the Hearing Officer, no doubt entitled to clothe himself with the mantle of the average consumer, had before him the evidence of his own eyes and concluded that there was a recognisable similarity between mark and sign – his para 114. There was – his para 134 – a modest degree of visual similarity and a greater degree, he held, of conceptual similarity between them. There was, of course, identity of services. Before esure’s application no one but Direct Line had used a non-vehicular wheeled device or logo in connection with insurance or financial services. Mr Blackett had given evidence that even if there was no confusion there was nonetheless a likelihood of an association being made by members of the public, meaning, I apprehend, a belief that Direct Line and esure were in some way associated, that there was a relationship between them – see paras 33 and 34 of Mr Blackett’s report. It is to be remembered that the Hearing Officer held that what Mr Blackett had said in his written report had largely held up throughout cross-examination. Although I am far from sure that the Hearing Officer dealt with what I have called the Additional Link as such, had he done so he would, in my view, have had to conclude, given the matters to which I have already referred, that the Additional Link, as to which there is no requirement of either confusion or even likelihood of confusion, was made good on the evidence before him. If I am right in thinking that Additional Link was required to be demonstrated before a conclusion of relevant unfair advantage or detriment can be reached then, in my judgment, it was so demonstrated. I do not see that there was any evidence that the distinctiveness of Direct Line’s mark would be sullied or debased by association with something unseemly – see para 81 above – were the esure mark to be granted registration and it cannot be assumed that it suffices, to demonstrate unfair advantage, merely that esure, like Direct Line before it, wishes the public to do business, of a kind that Direct Line had largely or wholly initiated, by way of direct contact with the insurer, as that would offend the good sense of the Coca-Cola and Kellogg examples to which I have referred – see para 80 above. 80. But was there evidence from which the Hearing Officer could find a real rather than hypothetical risk of tarnishment or blurring or of esure taking a free ride? Whereas, in relation to similarity and the likelihood of confusion, a Hearing Officer can often, no doubt, draw, without impropriety, on the evidence of his own eyes and his or her experience as a consumer, this may be said to be a more technical area where evidence from advertising, marketing and commercial men needs evaluation and is more likely to carry the day – see also para 89 supra. It fell to the Hearing Officer to evaluate such evidence. The Hearing Officer held that Mr Blackett in his written evidence had given evidence that adoption by esure of a computer mouse on wheels took unfair advantage of the distinctive character of Direct Line’s telephone on wheels by trading off and exploiting, to esure’s benefit, the reputation that Direct Line had established in its mark. Indeed, said Mr Blackett, if Direct Line’s telephone on wheels mark was required to share distinctive features (wheels and/or colour) with esure’s mouse, the distinctive character of Direct Line’s mark would be so reduced that it would not be wise for Direct Line to continue to promote that mark because it could not be confident that money spent promoting the telephone on wheels mark would not also benefit esure. I have failed to see why Mr Blackett should not have been believed and so am unsurprised that the Hearing Officer accepted the thrust of Mr Blackett’s evidence; at his paragraph 164 he said so and continued:- “In my judgment, a link which has this effect is parasitic in nature and therefore unfair”. In his using the word “parasitic” the Hearing Officer doubtless had in mind that, used as to organisms, it refers to cases where the parasite derives nutriment from its host and, used as to persons, to the case when the one feeds at the expense of the host.[66]There was evidence going the other way; in particular a hypothetical question put to Mr Ross elicited an answer, if the question had thoroughly been understood, that if there was no confusion between the marks (and, as I have indicated, in my view none was proved) then the use by esure of its proposed mark would not cause any damage to Direct Line. But the question of the weight to be given to answers, including conflicting answers given to questions by witnesses, is quintessentially a matter for the fact-finder, here the Hearing Officer, and especially could that be said to be so where reliance is placed on a hypothetical question based on an hypothesis which the witness did not accept and where the task of the tribunal below included evaluation of evidence which spread over many facts and factors. Whilst other Judges might, without impropriety, have assessed matters otherwise, it cannot reasonably be said that the Hearing Officer was obliged, if he was not to err in principle, to arrive at an assessment of the whole corpus of the evidence that was consistent with the answer to that one hypothetical question. Given the evidence, which he accepted, of Mr Blackett, evidence which Direct Line’s current Marketing Director, Mr Tildesley, supported and given, too, a reflection upon where the onus lay, I cannot see any error of principle in the conclusion of the Hearing Officer as to unfair advantage save that, for the reasons I have given, he regarded the test to be satisfied by Direct Line as more stringent than it should have been. It is to be remembered that, where there is similarity and a very distinctive earlier mark of high reputation, relevant unfair advantage or detriment may even sometimes be assumed - see para 88 above – which, in relation to Direct Line’s marks, suggests that the Hearing Officer could have concluded as he did without there being massive evidence to support the conclusion he reached. As for detriment to Direct Line’s mark, Mr Blackett’s written evidence had been that the use of esure’s computer mouse on wheels would be detrimental to Direct Line’s telephone on wheels mark by suggesting that esure offers similar benefits and by blurring Direct Line’s unique identity in the insurance market in which it had been the only company using a non-vehicular wheeled device or logo in connection with the provision of insurance and financial services. Mr Tildesley had, in cross-examination, affirmed his written evidence that, over time, the esure mouse on wheels would damage and dilute the distinctiveness of Direct Line’s mark in the insurance market. As I have mentioned, the Hearing Officer held that Mr Blackett had largely stood, in cross-examination, by what he had said in writing. Questions such as whether evidence is to be believed and, if it is, what weight is to attach to it are, as I have mentioned, essentially matters for the Hearing Officer and I remind myself of the respect – see para 10 above – which has to be paid to his decision. I am alive to Jacob LJ’s remarks as to robustness – see para 90 above, but it will be remembered, too, see paras 85 and 86 supra, that even a strong earlier mark’s distinctive character can have detriment caused to it or advantage taken of it. I would take Direct Line’s marks to be exceptionally distinctive and of high reputation. In all the circumstances, I am unable to detect any error of law in the Hearing Officer’s conclusion that use of the mark applied for would be detrimental to the distinctive character of Direct Line’s earlier trade mark. In particular I am unconvinced that the Hearing Officer’s conclusion was implicitly based (as Mr Silverleaf argues) upon a notion that the public could not immediately and without difficulty distinguish between the marks. It does not seem to me to follow that one can have relevant unfair advantage or detriment only where the public cannot so distinguish and I do not accept that the Hearing Officer’s conclusion rested on the implicit notion which esure suggests. His conclusion that the objection under section 5(3) succeeded was, as it seems to me, a conclusion free of error of principle save, again, that he had required a higher standard of proof on the part of Direct Line than, strictly speaking, should have been required. If he reached, without error of principle, the conclusions that he did even on posing to Direct Line too stringent a test, a fortiori he would have reached the like conclusions had he relied upon the lower form of test which, in my judgment – see paras 87 and 116 above – would have been appropriate. I should add this: there is no necessary inconsistency between, on the one hand, my holding, when freed from respect for the Hearing Officer’s decision, that the public would not regard Direct Line and esure to be one and the same or economically related but rather would be more likely to see them as rivals and, on the other, my upholding the Hearing Officer’s decision that were the mouse on wheels to be used as a mark there would, in the public’s mind, be taken to be such a link between the two that use of the mouse would be parasitic and unfair. In the former case I am free, for reasons I have given, to decide as I would have done on the evidence; in the latter and in the absence, as I have held, of error of principle, I am constrained so that what would have been my decision on the evidence is completely irrelevant. Pausing at this point I am thus disposed to dismiss esure’s appeal so far as it relates to section 5(3); the Hearing Officer’s conclusion was one to which a tribunal, properly directing itself, could reasonably arrive. But there are a number of other issues, raised in Direct Line’s Respondent’s Notice and elsewhere, that I need to deal with and to which I turn. Fettering[67]In its Respondent’s Notice Direct Line argues that the Hearing Officer should have found that use of the mark applied for by esure would fetter Direct Line’s capacity to exploit the commercial value of its famous telephone on wheels mark by its introducing a mouse on wheels in which the heritage of its telephone on wheels mark was embodied. That fetter, argues Direct Line, is an additional reason for finding in its favour on the basis of unfair advantage or detriment. The Hearing Officer met that argument in his paragraph 150 where he said as follows:- “Counsel for esure submitted that fettering or inhibition cannot be accepted as a form of damage to the reputation or distinctiveness of an established mark because it is fundamental that trade mark registration protects existing rights and not future developments. I agree. In my judgment “fettering” is not an independent head of damage. If the use complained of unfairly exploits, tarnishes or blurs the distinctive character or repute of the earlier mark, it will be caught under the plain language of the section. Use which doesn’t have any of those effects should not be caught under the alternative head of “fettering”. This is because it would amount to giving the proprietor of an established mark with a reputation a right to object simply because someone else has applied to register a mark that he would have liked to have used or registered. And that would fall foul of the principle that trade mark registration protects only existing rights”. That, as it seems to me, is a comprehensive answer to the argument and is one that embodies no error of principle. If, in relation to other aspects of section 5(3), I have been correct in upholding the views of the Hearing Officer then Direct Line needs no additional reason for a finding in its favour under the section but, were Direct Line to need some additional reason, I would not hold that its argument as to this form of fettering provided one.

Tarnishing

[68]At para 6 of its Respondent’s Notice Direct Line argues that the potential use of the esure mouse on wheels sign in connection with poor quality services could adversely affect the standing of Direct Line’s telephone on wheels trade mark in the eyes of the public and thus harm its overall reputation and reduce its selling power. There was, argues the Respondent’s Notice, an ever-present jeopardy from tarnishment. That, argues the Respondent’s Notice, constitutes a material risk of detriment to repute. This attack, as it seems to me, is exactly the sort of attack which the CFI in Sigla supra intended to rule out when it said that the objector must produce prima facie evidence of a future risk, which is not hypothetical, of detriment. The Hearing Officer describes no evidence of any likelihood of esure providing poor quality services, either such as would tarnish Direct Line’s mark or at all, nor, in the course of argument, was any such evidence drawn to my attention. In his paragraph 174 the Hearing Officer, dealing with such an argument, held as follows:
“It is submitted on behalf of esure that this is nothing more than speculation. There is nothing to suggest that esure’s reputation as an insurer is such as to reverberate negatively on DL. I agree. I reject this submission”
. I detect no error of law in the reasoning that led to that conclusion and accordingly reject the reject the argument in the Respondents’ notice that the Hearing Officer should have found that section 5(3) was made out in respect of detriment to repute by tarnishment.

Colour

[69]Before the Hearing Officer Direct Line, by Mr Hobbs, had submitted that in the absence of a proposal by esure for the mouse on wheels to be registered in any particular colour the Hearing Officer was required to consider normal and fair use of the mark in all colours. The Hearing Officer held Mr Hobbs’ argument on the point to be correct and he concluded that he was thus required to contemplate the effect of the use of the mouse on wheels mark “in any colour, including red”. In Direct Line’s Respondent’s Notice there is a heading which leads to a suggested conclusion, namely that the claim for protection by registration by esure was accordingly for the shape graphically represented, inter alia, in the colour red so as to confer protection in respect of the use of the shape, inter alia, in the colour red. In practical terms there is, as it seems to me, no difference between the contention in the Respondent’s Notice and the finding, which I have cited, by the Hearing Officer on the issue. However, Mr Silverleaf did in argument raise that the Hearing Officer erred in principle in relation to colour. He had paid too much regard to the possibility of esure using a red mouse with black wheels. But esure never foreswore the use of red and black, as they so easily could have done had that represented their intent and, all in all as to colour, I have failed to find any material error of principle in this respect on the Hearing Officer’s part.

Black and white

[70]In its Respondent’s Notice Direct Line seeks to build upon the Hearing Officer’s finding at his paragraph 127 that the phone on wheels mark had acquired a huge reputation in the financial services market and “was extremely distinctive, even in black and white. When seen in its customary red livery the mark was even more distinctive of the services of Direct Line”. Yet, when the Hearing Officer came to his conclusion on likelihood of indirect confusion, he relied to a material degree upon Direct Line’s use of red. At his paragraph 143 he said:
“In this case the colour red serves to reinforce the association of the earlier trade mark with DL. The use of the mark applied for in that colour would plainly serve as a further pointer to DL. Taking all of the above into account, I find that at the date of the application, the use of the mark applied for in the colour red would have been likely to cause indirect confusion with DL’s earlier mark.

(b) succeeds”

. The complaint raised in the Respondent’s Notice is, in effect, that the Hearing Officer should specifically have held esure’s mouse on wheels would give rise to the existence of a likelihood of confusion even when it was used in black and white. But the point only becomes material to the overall outcome if the Hearing Officer could be said to have erred in principle in his view that, given that esure had not limited the colours which it applied to use but had sought registration in black and white form, the conventional interpretation of such an application was that, if registration were to be granted, registration in any colour (including black and white) would have been protected. As I have not understood Mr Silverleaf to argue that the Hearing Officer erred in principle in that respect, the argument raised under this heading in the Respondent’s Notice adds nothing of substance and, as I am not only loth to tinker but obliged not to tinker with the Hearing Officer’s conclusions, short of a demonstrated material error of principle, I would prefer to leave his paragraph 143 and its reference to colour exactly as it is.

Reference to the European Court of Justice

[71]At a number of points in his argument Mr Hobbs said that, dependent upon what otherwise would be my conclusion, a reference of one or more questions to the European Court of Justice might become necessary. If, for example, I were to hold, in Mr Silverleaf’s favour, that the Hearing Officer had fallen into material error of principle in holding that there had been a degree of conceptual similarity between the rival mark and sign, then a particular question (which Mr Hobbs offered in draft) arose for reference. But I have not found there to be a bar to registration by reason of Article 4(1)(b) so it becomes somewhat academic to separate questions as to similarity from the overall result and, moreover, it was Mr Silverleaf’s argument that in any event the draft question never arose. Next Mr Hobbs argued that if I were to be against him on esure’s application covering the use of the mouse on wheels in red and hence that the comparison to be made included comparison between a mouse in red with black wheels and the red Direct Line telephone with black wheels then another question, again submitted by way of a draft, arose for reference to the ECJ. But I have not held against Direct Line in relation to the use of colour and, in particular, to the use of red and black as colours for the mouse and so, again, no need for a reference arises even on Mr Hobbs’ argument. 87. Thirdly, Mr Hobbs argued that if I were not to accept the Hearing Officer’s reasoning in relation to unfair advantage and detriment under section 5(3) then, he said, the following question would arise:
“Is it permissible to uphold an objection to registration under Article 4(3) or Article 4(4)(a) of Directive 89/104 simply upon the basis that the opposed trade mark is likely to be linked with the earlier trade mark in the perceptions of the relevant average consumer in circumstances where the earlier trade mark possesses a strong distinctive character and is both well known and protected in respect of goods or services of the kind for which the opposed trade mark is sought to be registered?”
In the event, I have not found material error of principle in the Hearing Officer’s decision under section 5(3) and so, on Mr Hobbs’ argument, the question no longer arises. Nor does the question arise on Mr Silverleaf’s argument because he saw it to be necessary to be referred only if, inter alia, I took the view that the Hearing Officer had been wrong in concluding under section 5(3) in the manner that he did. Accordingly, neither side has, in the event, seen this last question to arise in such a way that it should necessarily be referred to the ECJ at this juncture and nor do I see it as necessary either. In the event, therefore, I have not seen it to be appropriate to refer any questions to Europe at this juncture.

Overall Conclusion

[72]For the reasons I have given, whilst the appeal succeeds as to Article 4(1)(b) (section 5(2)(b)), it fails as to section 5(3) (Article 4(3)) and hence, overall, the appeal fails in the sense that, in my judgment, the Hearing Officer’s conclusion that esure’s mark shall not be registered should stand.

Cited in 1 later judgment