“selling fine homes throughout the country”
“invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person’s goods as the goods of another.”
“there are accommodated and adjusted inter se three sets of interests. There is the plaintiff’s interest in protecting his skill, effort and investment, the interest of the defendant in freedom to attract purchasers for his goods and services, and the interests of consumers in having available a range of competitive goods and services for selection by consumers without the practice upon them of misrepresentations.”
“absent the estate agent business there is nothing. There is nothing there to attract goodwill.”
“First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the Plaintiff’s goods or services.”
“No one is entitled to be protected against confusion as such. Confusion may result from the collision of two independent rights or liberties, and where that is the case neither party can complain; they must put up with the results of the confusion as one of the misfortunes which occur in life. The protection to which a man is entitled is protection against passing off, which is quite [a] different thing from mere confusion”
“Once the position strays into misleading a substantial number of people (going from “I wonder if there is a connection” to “I assume there is a connection”) there will be passing off, whether the use is as a business name or a trade mark on goods.”
“Where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered”
“There is no “property” in the accepted sense of the word in a get-up. Confusion resulting from the lawful right of another trader to employ as indicative of the nature of his goods terms which are common to the trade gives rise to no cause of action. The application by a trader to his goods of an accepted trade description or of ordinary English terms may give rise to confusion…But there can be no action in passing off simply because there will have been no misrepresentation. So the application to the defendants’ goods of ordinary English terms such as “cellular clothing” (Cellular Clothing Co. v. Maxton and Murray (1899) 16 R.P.C. 397) or “Office Cleaning” (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 R.P.C. 39) or the use of descriptive expressions or slogans in general use such as “Chicago pizza” (My Kinda Town Ltd. v. Soll [1983] R.P.C. 407) cannot entitle a plaintiff to relief simply because he has used the same or similar terms as descriptive of his own goods and has been the only person previously to employ that description… Every case depends upon its own peculiar facts. For instance, even a purely descriptive term consisting of perfectly ordinary English words may, by a course of dealing over many years, become so associated with a particular trader that it acquires a secondary meaning such that it may properly be said to be descriptive of that trader’s goods and of his goods alone, as in Reddaway v Banham[1896] AC 199 .”
“It should also be remembered here that it is seldom the case that all instances of deception come to light -- the more perfect the deception the less likely that will be so.”
“First, Mr Purvis relied on a complete absence of complaints about confusion from Asda customers despite the 6 months that the logo had been present in the stores to the date of the trial. There was unchallenged evidence as to complaints procedures and handling, and none were recorded. I give this little weight. For this route to have yielded any relevant complaints there would have to have been customers who were confused, who then had their confusion removed, and who then felt sufficiently strongly about it to complain to Asda formally about it. This does not seem to me to be a likely scenario. I have difficulty in imagining how this can arise in practice.”
“Evidence of actual confusion is always relevant and may be decisive. Absence of such evidence may often be readily explained and is rarely decisive. Its weight is a matter for the judge.”
“Even if there is no evidence of confusion whatever, the court must decide for itself, and may conclude that passing-off has been established: see e.g. per Sir Raymond Evershed M.R. in Electrolux Ltd v. Electrix Ltd (1953) 71 R.P.C. 23 (CA) at p. 31. Thus, it has often been said that the availability of such evidence is important, but not its absence, because it is notoriously difficult to obtain such evidence.”
“(a) by diverting trade from the plaintiffs to the defendants; (b) by injuring the trade reputation of the plaintiffs whose men’s clothing is admittedly superior in quality to that of the defendants; and (c) by the injury which is inherently likely to be suffered by any business when on frequent occasions it is confused by customers or potential customers with a business owned by another proprietor or is wrongly connected with that business.”
“We are currently taking advice as to potential action against Fine and an important element of this consideration is any confusion of the brand in customers’ minds. Would you please, as a matter of urgency, reply to this email with details of any such confusion you are aware of that has occurred with customers of your office. Please let me know if you have evidence of such confusion, i.e. correspondence.”
“As you are aware, we are deep into the litigation against Spicer Haart, the owners of Fine, and our lawyers have stressed the importance of gathering as much evidence of cases of confusion in the marketplace as possible. Many of you have already supplied us with good examples of this but, the stronger and more expansive the level of evidence we can supply, the stronger our case becomes. As a reminder, we need details of confusion that has arisen between your agency and the Fine brand such as – applicants contacting you to view properties on the market with Fine, vendors calling you to discuss a property they may have on with Fine, anecdotal examples of customers speaking to you having mistakenly contacted Fine, etc. [characterised by Mr Platts-Mills QC as “any old tittletattle”]. The more substantial the evidence the better; for example, the provision of names and contact details of customers who have been confused is very good – and it would be ideal to have correspondence from them to this effect. If you know anyone who would be willing to act as a witness, then would you please forward me their contact details. Also very useful would be any evidence you have of the Fine brand copying your marketing activities and material, either now or when they were trading as FineHaart…”
“The Fine litigation continues to progress towards the High Court hearing in February. As you know, this is a case of Trade mark infringement and Passing Off and these issues are generally tested by the confusion such encroachment causes. I know this is causing considerable confusion and I write again to ask you to notify us of any confusion you may encounter. Please do not underestimate how important this is to the brand – please do not leave it to others – please do not think anything is too small or too trivial – and please do not think your clients are going to have to go to court or be encumbered by officialdom…none of the above are the case. Please report each and every case of confusion”
“…For the case to succeed, the test is ‘does the imitation cause customer confusion?’ Clearly it does and we do have a significant weight of evidence to prove this as being the case. However, it appears the confusion is deeper, more widespread and more rooted than just this, in day to day mistakes and it is that volume of mistakes I would like to try to measure between now and the hearing. To this end I would ask that you copy and use Form 3 in your Fine & Country outlets on each occasion that you experience an instance of confusion… This is a very serious and difficult litigation which we are bound to pursue in fulfilling our contractual obligations to yourselves and success will terminate their trade mark infringement and passing off of the Fine & Country brand. We do now need every Fine & Country licence holder to fulfil their contractual obligations under their licence – “To take such reasonable action as the Company shall direct in relation to any infringement of the Proprietary Marks.””
“I or representatives of my business have on several occasions encountered circumstances in which members of the general public have experienced confusion in connection with the FINE and Fine & Country brands.”
“I’m not Haart, I’m Fine.”
“The reason why I thought it might be connected was that I saw the FINE. I’ve seen them on the way down on the A12 advertising. I saw the squiggle, and the only reason that I thought it might have been connected was because, if you look at Fine & Country, underneath the picture of the property they’ve got a dark brown line with the writing of the address, and then, if you look at Fine, theirs is dark brown, not quite the same colour brown, but with Fine and the little squiggle under Fine. Because [both] were in Church Street, I just assumed they were part of…”
“Until Veronica explained this to me I thought that “Fine & Country” and “Fine” were the same company. I find the similarity of the “Fine” name and branding to be very confusing and misleading.”
“Well, the reason I remembered it so distinctly was I was actually very embarrassed because, you know, I had corrected them, so as soon as he explained and we had that conversation then I just – I left. Initially I felt my head between my toes. I was very embarrassed because I felt how could I make that mistake? So I just – Yes, I laughed to myself obviously but, yes, I just left.”
“Q Presumably you were asked whether you had any written notes of a meeting with Clare Appleby, or any notes over and above this? A That's correct. Q And the answer is, presumably, you do not? A I don't. Q So you have been asked to remember a meeting you had with Clare Appleby in August, or July rather, of 2010, and in that time between now and July 2010 you have had dealings with numerous properties from both the buying and selling things, have you not? A That's correct. Q As well as running a busy Norwich office? A That's correct. Q I want to suggest to you it must have been impossible to remember the details of the meeting you had with Miss Appleby in July 2010, clearly, at this distance of time? A Some people and some properties stay in your mind quite firmly and this is one and both the person that stayed in my mind. Q Is that the truth? A I wouldn't lie.”
“Q Could you just have a look at the next page of Miss Appleby's documents, p.4? You see this is a diary entry. You see she has you down as being "Darren from Fine & Country"? A I do. Q So if this entry is accurate it would appear that she was under the impression that you were from Fine & Country? A She may well have been.”
“You could tell her until you were blue in the face that we are Fine, she may go home and think you are Fine & Country, even if you have done absolutely everything you possibly can, we do not know. She was a pretty strange witness, if I can put it that way.”
“I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, they were taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard.”
“…As you are no doubt aware, the general enquirer seems to be confused and it takes quite a bit of explanation before they grasp the difference between the two brands. These enquiries take a degree of time for our employees to investigate and respond to. Being professionally committed and helpful they will naturally take the time to help the caller.”
"I can report we had a number of calls/enquiries regarding a property which is currently on the market with Fine in Petersfield"
"As you are no doubt aware, the general enquirer seems to be confused"
"The general enquirer seems to be confused, and it takes quite a bit of explanation before they grasp the difference between the two brands"
"It takes quite a bit of explanation"
"No, we are Fine & Country and they are Savills"
"Are the businesses the same?"
“Q … You have lost some big agencies and gained some small agencies? A Yes, that would be logical conclusion to draw from that. It is on the main part of it. It is considering -- to put it in context of the market place that we have been through the brand has remained amazingly stable actually. The brand and so our rise was quite meteoric and I think that we went through a bumpy patch say in 2008 as did the whole of the estate agency industry and since then I would say actually that the brand has continued to grow but quite stable on ---- Q Grow in a steady way? A Yes. Q Steady and satisfactory manner? A Not very exciting but steady and satisfactory, yes. Q Without any big marketing or effort on your part? A It's a doddle. No, I'm being facetious. It's actually we work tremendously hard. As a company our whole culture is of small business determination and hard work. Q And despite the arrival of my clients in 2009? A Yes, my Lord. Q So despite the arrival of my clients and whatever it is they have been doing, your company has sailed merrily on on its way? A Yes, my Lord. Q It certainly has not had any major effect on your activities? A No, my Lord. Q Now, would you go to tab 9 in bundle B and go to paragraph 43 and there are some figures there and so he is talking about the start of Fine, and he says that they rebranded approximately 40-50 Finehaart properties, so they changed those from Finehaart to Fine by the end of 2009: "We had listed 149 in total by the end of 2009. 2010 we listed 468. In 2011 that figure had risen to 778." Q Now, does that sound like a reasonable rate of growth and getting a business going? Do you have any view on that? A I do have a view on it. My Lord, my view is that for the amount of money that has been apparently, from what I can see, thrown at this project I think it is a surprisingly small penetration into the market place I am afraid.”
“55 That public interest requires that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods. Therefore, marks consisting exclusively of such signs or indications are not eligible for registration unless article 3(3) of the Directive applies.”
“[I]t may be useful to cite the statement by Mr Justice Parker in re Gramophone Company's Application[1910] 2 Ch. 423 at page 437 since he was a master in this branch of law: “For the purpose of putting a mark on the register, distinctiveness is the all-important point, and in my opinion, if a word which has once been the name of the article ought ever to be registered as a trade mark for that article, it can only be when the word has lost, or practically lost, its original meaning. As long as the word can appropriately be used in a description of the articles or class of articles in respect of which a trade mark is proposed to be registered, so long, in my opinion, ought the registration of that word for those articles or that class of article to be refused.” (5) and quoted Jacob J in the Treat case (British Sugar PLC v. James Robertson & Sons Ltd[1996] RPC 281 at 302 and 306: “it is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader...” ….In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this...it must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark is or is almost a household word.” trader...”
“46. - (1) The registration of a trade mark may be revoked on any of the following grounds- (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;” (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;”
“(2) For the purposes of subsection (1) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered …”
“[51] The general approach to be adopted in assessing the requirement of a likelihood of confusion under the Regulation and Directive has been considered in a number of important decisions of the Court of Justice includingCase C-251/95 Sabel BV v Puma AG[1997] ECR I-6191 ,Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn- Meyer Inc[1998] ECR I-5507 , Case C342/97Lloyd SchuhfabrikMeyer & Co GmbH v Klijsen Handel BV[1999] ECR I-3819 ,Case C-425/98 Marca Mode CV v Adidas AG[2000] ECR I-4861 ,Case C-3/03 Matratzen Concord GmbH v GmbG v Office for Harmonisation in the Internal Market[2004] ECR I-3657 ,Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH[2005] ECR I-8551 and Case C334/05Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS[2007] ECR I-4529 . [52] On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the determination of many of the disputes coming before it: (a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.”
“[275] There is an important difference between the comparison of marks in the registration context and the comparison of mark and sign in the infringement context, namely that the former requires consideration of notional fair use of the mark applied for, while the latter requires consideration of the use that has actually been made of the sign in context. This was established by the judgment of the Court of Justice inCase C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd[2008] ECR I-4231 . InOch-Ziff Management Europe Ltd v OCH Capital Ltd[2010] EWHC 2599 (Ch) , [2011] ETMR 1 at [77]-[78] I held that this involved consideration of the circumstances of the use of the sign complained of, and not consideration of circumstances prior to, simultaneous with or subsequent to the use of the sign. [276] I also held inOch-Ziffat [79]-[101] that Article 9(1)(b) of the Regulation extends to “initial interest confusion”, that is to say, confusion on the part of the public as to the trade origin of the goods or services in relation to which the impugned sign has been used arising from use of the signpriorto purchase of those goods or services, and in particular confusion arising from use of the sign in advertising or promotional materials. This conclusion applies equally to Article 5(1)(b) of the Directive.”
“[85] These paragraphs were considered by Arnold J in Och-Ziff Management Europe Ltd v Och Capital LLP[2010] EWHC 2599 (Ch) ,[2011] FSR 11 . The case concerned a claim by Och-Ziff Management that Och Capital had infringed its Community trade mark registrations for the marks OCH-ZIFF and OCH by the use of the sign OCH Capital. After referring to the paragraphs of the decision of the Court of Justice in O2 Holdings set out above, he continued at [77]-[78]: “77. The question which arises is this: how far do the “context” referred to by the Court at [64] and the “circumstances characterising that use” referred to by the Court at [67] extend? Counsel for Och-Ziff submitted that the context and circumstances were limited to the actual context and circumstances of the use of the sign itself. Thus, in the O2 case itself, where the sign was used in a comparative advertisement, the context was the whole of the comparative advertisement, but no more. By contrast, counsel for the defendants submitted that the context and circumstances included all circumstances relevant to the effect of the use of the sign, including circumstances prior to, simultaneous with and subsequent to the use of the sign. “77. The question which arises is this: how far do the “context” referred to by the Court at [64] and the “circumstances characterising that use” referred to by the Court at [67] extend? Counsel for Och-Ziff submitted that the context and circumstances were limited to the actual context and circumstances of the use of the sign itself. Thus, in the O2 case itself, where the sign was used in a comparative advertisement, the context was the whole of the comparative advertisement, but no more. By contrast, counsel for the defendants submitted that the context and circumstances included all circumstances relevant to the effect of the use of the sign, including circumstances prior to, simultaneous with and subsequent to the use of the sign. 78. In my judgment the context and circumstances are limited to the actual context and circumstances of the use of the sign itself. The Court of Justice explicitly said at [64] that the referring court was right to “limit its analysis” to the context in which the sign was used. Furthermore, it referred at [67] to the circumstances “characterising the use”, not to the circumstances more generally. Thus circumstances prior to, simultaneous with and subsequent to the use of the sign may be relevant to a claim for passing off (or, under other legal systems, unfair competition), but they are not generally relevant to a claim for trademark infringement under art.9(1)(b) . In saying this, I do not intend to express any view on the question of post-sale confusion referred to below.” [86] It is not entirely clear to me what Arnold J and the parties had in mind by the phrase “circumstances prior to, simultaneous with and subsequent to the use of the sign” but it must, I think, be seen in light of the particular and rather specific issue in that case, namely whether Article 9(1)(b) extended to confusion arising from use of the sign in advertising and promotional materials, so called ‘initial interest confusion’, whether or not any sale resulted and whether or not the consumer remained confused at the time of any such sale. The judge held that initial interest confusion was actionable. At least in the circumstances of that case, it mattered not that it was dispelled at a later time. [87] In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context. [88] It necessarily follows that I would reject Mr Mellor's first submission. The judge approached the issue of the likelihood of confusion arising from the use of the straplines entirely correctly. The average consumer would see the signs “spec saver” and “Spec savings” in the context of the straplines and, indeed, the posters and other materials on which they were used as a whole, and the judge was right to consider them on that basis.”
“37. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade marks with a reputation (see, to that effect, Intel Corporation, paragraphs 31 and 32). 38. Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27). 39. As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark's ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29). 40. As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark. 41. As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation. 42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28).”
“112. Thus, the issue raised by Jacob L.J. at para.91 of his judgment in L'Oréal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party. …. 136. … It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oréal v Bellure. No additional factor has been identified in this case other than intention. 137. The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in para.79 of the Court's judgment. As Advocate General Sharpston said at para.65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. The Board of Appeal in Mango also said that unfair advantage is the more likely where there is greater similarity of goods as well as where the mark is more distinctive, but that was a case where the mark was identical, and strongly distinctive, and the goods were not the same but they were in an associated or overlapping field. The Court in L'Oréal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel.”
“[141] In my judgment these cases do reveal a development by the Court of Justice of its jurisprudence on the scope of Article 9(1)(c) of the Regulation. They establish that a proprietor of a trade mark with a reputation is not necessarily entitled to prohibit the use by a competitor of his mark in relation to goods for which it is registered even though the mark has been adopted with the intention and for the purpose of taking advantage of its distinctive character and repute, the competitor will derive a real advantage from his use of the mark, and the competitor will not pay any compensation in respect of that use. Consideration must be given to whether the use is without due cause. Specifically, the use of a trade mark as a keyword in order to advertise goods which are an alternative to but not mere imitations of the goods of the proprietor and in a way which does not cause dilution or tarnishment and which does not adversely affect the functions of the trade mark must be regarded as fair competition and cannot be prohibited.”
“Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough that the parties combine to secure the doing of acts which in the event prove to be infringements.”
“Seems once again ‘Fine and Country’ are happy to ride on our marketing/profiling”
“At a glance when I am looking at the other stuff I just saw Fine. Fine” (Desmond XX, day 5, p25/line s 24-25). 296. Buyers: bundle E1 Tab DATE LOCATION COMMENTS 2.24/02/2010 Wadhurst Client believed property on offer in Wadhurst. In fact a FINE instruction. A further two clients believed that F&C had an office in Wadhurst, which is in fact a FINE office. Tab DATE LOCATION COMMENTS 6.24/02/2010 Essex/Suffolk On average three calls a week received where caller insists F&C have a property at a location which is in fact on offer by FINE. Usually calls originated from “For Sale” board. F&C have also been asked to value properties where the potential client has asked about the “one you sold up the road”, which has turned out to be listed with FINE. 7.24/02/2010 Hampshire Enquiries received from potential clients regarding a property on the market with FINE in Petersfield. Staff have to explain to each enquirer that property not on offer through F&C. Do we want to emphasis “this takes some time”? Do we want to cross reference with her witness evidence? Ann-Marie Green. 10.27/05/2010 Buckinghamshi re Client saw a FINE property on a website and telephoned the number displayed but got no response. Found F&C on directory enquiries and F&C agent had to explain that the property was on the market with FINE not F&C. 11.08/06/2010 Woodhouse Eaves, Leicestershire Woman called F&C office frustrated as unable to find a property she saw on Rightmove. In fact property is on the market through FINE. 13.10/06/2010 Surrey F&C received two calls from potential purchasers looking to view a property on the market with FINE in Dorking. 16.21/06/2010 Grantham, Lincolnshire Two clients called F&C wishing to view properties that were in fact available through FINE. 17.23/06/2010 Cambridge Two examples of potential purchasers confusing FINE and F&C marketing in national newspapers. Tab DATE LOCATION COMMENTS 19.30/06/2010 Norfolk & North Suffolk Potential purchaser wished to view a property through F&C and was surprised when F&C did not have details of this on the system from previous viewing. Realised that it was a property previously viewed through FINE. 20.01/07/2010 Woodbridge (1) (See “Sellers”). (2) (See “Unclassified”) (3) (See “Sellers”). (4) Client registered with F&C and purchased a property through FINE. Confused between F&C and FINE and states in a follow up courtesy call (incorrectly) that purchasing the property through F&C. 21.06/07/2010 North Essex Email enquiry received from potential client regarding property in fact being marketed by FINE. Property seen on rightmove.co.uk. 24.15/07/2010 Felixstowe, Suffolk Potential client saw a FINE board and mistook the property for one of F&C’s. 29.09/08/2010 Grantham, Lincolnshire Query received from potential client regarding property advertised in The Times. Property in fact on market with FINE. 30.09/08/2010 Grantham, Lincolnshire Further example of potential client asking about a property which she could not see on F&C’s website. In fact on market through FINE. 31.09/08/2010 Essex Potential client viewed advert for property being offered by FINE and could not get an answer from the advertised number on FINE advert so contacted F&C in Billericay (thinking it was a FINE office). F&C had to apologise for confusion as property on through FINE. 37.15/09/2010 Colchester North Essex Email from buyer to F&C intended for Darryl Parr, manager of FINE in Colchester. Tab DATE LOCATION COMMENTS 39.20/09/2010 North & West Norfolk Email query to F&C from potential client regarding property on the market through FINE and advertised on primelocation.co.uk. 42.07/10/2010 Chelmsford (1) F&C received a telephone call about a property for sale – the property is actually being sold by “FINE”. (2) F&C received a telephone call from a potential seller requesting a valuation saying that he had seen boards around with FINE on them and enquiring whether F&C are the same company. 45.18/10/2010 Epsom (1) F&C received phone call from potential buyer standing outside one of F&C’s properties enquiring why no one was there – she was actually due to view a different property with FINE. (2) F&C received a telephone call from a potential client asking to speak with someone from FINE. Caller was very insistent that he was speaking with FINE and that someone called Guy worked there. 48.01/11/2010 Epsom, Surrey Potential client contacted F&C in relation to a property he had seen advertised (by F&C) but he was under the impression that F&C and “Fine”
“…these references have come off Rightmoveplus. The reference is RMplus. That is actually the intelligence that sits behind that the agent has access to but the members of the public do not, so therefore both of the details were taken from Rightmoveplus, not the Rightmove site as available to the public.” (p44/lines 27-31) 113.27/09/2011 Chelmsford & West Essex F&C office received a call enquiring about a property in Kersey Tye. F&C representative explained that they were not acting on the sale of such property. Following the call representative identified the property on Rightmove. Property was being marketed by Fine. Tab DATE LOCATION COMMENTS 115.28/09/2011 Woodbridge Member of the public (Mr Clarke) attended F&C office requesting further details of a property in Trimley. Mr Clarke explained that he had called into the office at an earlier date and had been given a brochure. He required a further copy of the brochure. F&C representative asked if it could be a “Fine Haart” property. Mr Clarke said that he was sure that it was “Fine & Country”
“On most of the occasions in these circumstances they would not want to admit that they have got something like this wrong. This was something that was an embarrassment for them and something that they did not want to go into a great amount of detail for. They were embarrassed at having accused a company of committing an offence when it had not actually been involved at all.” (p62/lines 16) 56.05/01/2011 Park Lane F&C was contacted by a journalist at the Mail on Sunday who wanted to do a feature on one of their properties. The property in question was in fact being marketed by FINE and not F&C. 58.24/01/2011 North Norfolk F&C were contacted by Richard Kennedy (a relocation agent), who is paid to assist families of the disabled with finding suitable properties. Both he and his client were under the impression that a particular property was being listed with F&C when it was actually listed with FINE. Richard was angry at the similarity between the brands as he had spent significant time searching the F&C website for a particular property which his client advised him was listed with F&C, only to discover that it was in fact listed with FINE. Richard is paid by the hour, and the confusion caused expense to his client for wasted work. Tab DATE LOCATION COMMENTS 59.24/01/2011 Park Lane (1) F&C received an email from a sales and lettings manager who mistakenly believed that F&C had amalgamated with Spicerhaart and wanted to apply for a job with the new agency. (2) An article in “Estate Agent Today” headed “Fine & Country agent rebrands as arch rival FINE” caused the confusion above. 61.28/01/2011 Cheltenham Employee of letting agent next door to F&C asks for details of property advertised in a newspaper by FINE. He said that he saw the word “fine” and assumed it was F&C. 78.12/05/2011 Kent Account manager who sells advertising space to estate agencies thought that the FINE branded window in the Broadstairs branch of Haart was F&C because the window display and colours look very similar to the F&C brand. 81.31/05/2011 Sheffield The publication “Derbyshire Life” thought that F&C (Nottinghamshire) had taken half a page of adverts and asked F&C in Sheffield to fill the page with them. It transpired that the advert had in fact been taken by F&C. 86.14/06/2011 National Article in the Saturday Telegraph states that a property is being marketed by FINE but provides the F&C website for further information. 89.20/06/2011 Park Lane, London Richard Cutt of Knight Frank London attended F&C Park Lane offices. Mr Cutt spoke with representatives of F&C to discuss F&C and its approach to advertising. During the discussion it became clear that Mr Cutt believed that FINE and F&C were the same and that the FINE advertising was produced by F&C. 300. E2: professionals (“101” refers to tab 1, “102” refers to tab 2, etc.) Tab DATE LOCATION COMMENTS 107.21/09/2011 Cambridge Email from chartered surveyor (Nicholas Chaplin) to F&C. Mr Chaplin explained that he had just had a meeting with his Head of Commercial (another chartered surveyor, Mr Burton) who, when Fine and Country were mentioned said “Oh, yes, I’ve seen their boards around our area, they are calling themselves FINE now, aren’t they?”
“But they are the same colour, the same style etc. I just assumed they were one and the same.” 108.22/09/2011 Cambridge Simon Bradbury (of F&C Cambridge) had a meeting with Nicholas Chaplin (chartered surveyor and owner of Hilbery Chaplin Estate Agents in Essex) to discuss the merits of premium branding. During the conversation Mr Chaplin commented that he particularly liked the “new logo” that F&C had recently adopted. It transpired that Mr Chaplin had mistaken the FINE logo as being the new logo of Fine & Country. Mr Chaplin is an experienced estate agent and chartered surveyor who is familiar with the industry and the major players within it. 109.22/09/2011 Woodbridge Nigel Broadhead Mynard solicitors sent two letters to F&C Woodbridge agent under the mistaken belief that they were dealing with the sale of the property. The property was actually being sold by FINE. 114.27/09/2011 Gerrards Cross F&C took a call from The Buying Solution (an arm of Knight Frank which deals with relocations). The representative of The Buying Solution asked about various properties being marketed by that F&C office including 3 properties which were in fact being marketed by FINE. Tab DATE LOCATION COMMENTS 121.06/10/2011 Hampshire Hampshire Chronicle article concerning a property being marketed by Fine. However, it appears that the property is being marketed by F&C as the F&C logo is at the end of the article. 129.19/10/2011 Essex F&C office received a call from Connells surveyors asking about a property F&C had sold in White Colne. The property had actually been sold by FINE. 133. September/ October 2011 Cardiff Publication called “Cardiff Life” featured a property which it stated was on the market with Fine & Country. The property was in fact on the market with FINE. 145.22/12/2011 Colchester Estate agency Fenn Wright made enquiries of F&C office regarding a property that was in fact being marketed by Fine in Witham. 152. 18/01/12 St Albans Email from owner of property company stating that he thought that Fine & Country and FINE were the same company, one selling and one letting, the names and typefaces were so similar. He was surprised to find that they were different companies. 166. 16/02/12 Loughton F&C representative received a call from the Essex Chronicle newspaper requesting an advertising copy for a booking. F&C representative did not have a space booked until1 March 2012 . F&C’s advertising agency telephoned the Essex Chronicle to clarify and confirmed that it was a booking for an advertisement for Fine rather than F&C. The Essex Chronicle employee had been confused as to who he should contact as he believed Fine and F&C to be the same company. 170.27/02/2012 Park Lane Potential client called F&C office asking to speak to Fine estate agents. It appeared that she had however called the number for the Fine & Country Hockley office from the Zoopla website. Others 301. Instances not in bundles E1 or E2 Tab DATE LOCATION COMMENTS H November 2011 Wales Mr Pryke met his sister-in-law and her husband. She saw a sign board which she thought was a F&C sign board, whilst he thought that Fine and F&C were the same company. The sign board turned out to be a Fine sign board. 302. E1: others Tab DATE LOCATION COMMENTS 9.27/05/2010 Hampshire Email sent from marketing and promotions agency to F&C offering “Haart” the opportunity to partner O2. 15.16/06/2010 Uckfield, East Sussex Letter from member of the public who believed he had seen an F&C for sale sign at a property and was subsequently corrected by a relative. Upon re-inspection of sign realized it was through FINE. Stated it was “very confusing.” 22.13/07/2010 Norfolk Letter from client drawing F&C’s attention to confusion between FINE and F&C. Client’s friends and contacts also mentioned finding this confusing. 25.26/07/2010 Park Lane Call to F&C’s Head Office from a member of staff from the FINE office in Cobham who had an enquiry from a friend of a Mr Peters regarding several properties to sell in Grenada, Spain and had called the F&C office confusing it for a FINE office. Evidence that even FINE staff are confused. 26.29/07/2010 North Essex Email from applicant for PA/secretary position at FINE sent to F&C in error. A friend had referred to FINE as Fine & Country when passing on details of the vacancy. Tab DATE LOCATION COMMENTS 33.12/08/2010 St Neots FINE staff admitting in a telephone call that confusion between brands happens regularly. 34.12/08/2010 St Neots Admission by member of FINE staff in an email that people confuse FINE with F&C as obviously the names are a “little similar”
“Can you please advise are you related to the “fine” estate agents? Thank you.”