“Class 9 (goods): ‘computer software to enable searching of data; computer programs; computer software; computer software to enable connection to databases and the Internet; computer software supplied from the Internet. Class 38 (services): ‘communications by means of or aided by computers; transmission of text, messages, sound and/or pictures; computer aided transmission of messages or images; telecommunication services relating to the Internet; telecommunication of information (including web pages); provision of telecommunications links to computer databases and websites on the Internet.” ii) UK 2 302 176E (‘UKTM 176’) for the word ‘SKY’, effective as of5 June 2002 . This mark is also registered for a range of goods and services. However, for the purposes of this action, Sky relied on: “Class 35 (services): ‘receipt, storage and provision of computerized business information data.”
“1. A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. 2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. 3. Surrender shall be entered only with the agreement of the proprietor…”
“In our telephone discussion with Mr Clarke, we agreed that the following changes would be made (the changes insofar as they offer from the initial amendment request are indicated in capitals) Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; including data storage apparatus and instruments, software and data storage software, and software for video-conferencing, but excluding car batteries. Class 35 Advertising business management business administration; office functions; including online storage of files, data, photographs, graphics, documents, videos, images, audio files, audio-visual files, visual files, computer files, computer applications and information for others, electronic data storage services for personal and business use, and services for the electronic storage and organisation of files, images, music, audio, video, photos, drawings, audio-visual, text, documents and data, but excluding business relocation services. Class 38 Telecommunications, INCLUDING VIDEO-CONFERENCING SERVICES AND SHARING OF FILES, IMAGES, MUSIC, VIDEO, PHOTOS, DRAWINGS, AUDIO-VISUAL, TEXT, DOCUMENTS AND DATA; BUT EXCLUDING TELEGRAPH COMMUNICATIONS SERVICES. Class 42 Scientific and technological services, and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; including ONLINE TECHNICAL STORAGE FACILITIES, ONLINE TECHNICAL BACK-UP SERVICES AND ONLINE TECHNICAL BACK-UP FACILITIES, software as a service (SaaS) services, and electronic hosting of files, data, photographs, graphics, documents, videos, images, audio files, audio-visual files, visual files, computer files, computer applications, information for others and video-conferencing services but excluding the performance of chemical analyses. We look forward to receiving confirmation of these changes. . . .”
“Class 9: “. . . . . .including data storage apparatus and instruments, software and data storage software, and software for video-conferencing, but excluding car batteries.”
“. . . . . including online storage of files, data, photographs, graphics, documents, videos, images, audio files, audio-visual files, visual files, computer files, computer applications and information for others, electronic data storage services for personal and business use, and services for the electronic storage and organization of files, images, music, audio, video, photos, drawings, audio-visual, text, documents and data, but excluding business relocation services.”
“. . . . . including video-conferencing services and sharing of files, images, music, video, photos, drawings, audio-visual, text, documents and data; but excluding telegraph communications service.”
“ . . . . . including online technical storage facilities, online technical back-up facilities, software as a service [SaaS] services, and electronic hosting of files, data, photographs graphics, documents, videos images, audio files, audio-visual files, computer applications, information for others and video-conferencing services, but excluding the performance of chemical analyses.””
“10 – (1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. (2) A person infringes a registered trade mark if he uses in the course of trade a sign where because - (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. (3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which – (a) is identical with or similar to the trade mark, (b) [repealed] where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. (4) …”
“average consumer 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’. (Lloyd Schuhfabrik v Meyer [1999] ETMR 690 ¶¶26-7).”
“208. Against this background, a number of points are common ground between the parties. First, the average consumer is, as Lewison LJ put it in Interflora (CA I) at [44] and [73], a “legal construct”. 209. Secondly, the average consumer provides what the EU legislature has described in recital (18) of the Unfair Commercial Practices Directive as a “benchmark”
“The task for the court is to inform itself, by evidence, of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know; and then, treating itself as competent to evaluate the effect which those matters would have on the mind of such a person with that knowledge, ask the [relevant] question”. “211. Fourthly, the average consumer test is not a statistical test in the sense that, if the issue is likelihood of confusion, the court is not trying to decide whether a statistical majority of the relevant class of persons is likely to be confused.” 212. There is nevertheless a significant dispute between the parties with regard to the average consumer (and the reasonably well-informed and reasonably observant internet user, as to whom see below). Counsel for M & S submitted that the effect of the Court of Justice’s case law is to create a single meaning rule in European trade mark law, that is to say, a rule that the use of a sign in context is deemed to convey a single meaning in law even if it is in fact understood by different people in different ways. Accordingly, he submitted that it is impermissible for the court to consider whether a significant proportion of the relevant class of persons is likely to be confused when determining an issue as to infringement. Counsel for Interflora disputed that there is a single meaning rule in European trade mark law. He submitted that consideration of whether a significant proportion of the relevant class of persons is likely to be confused is not merely permissible, but positively required by the Court of Justice’s case law. I shall consider this question in two stages. At this stage, I shall consider the position with regard to the average consumer test generally in European trade mark law. Below, I shall consider whether the position is any different in the case of the reasonably well-informed and reasonably observant internet user confronted with keyword advertising. 213. In my judgment there is in general no single meaning rule in European trade mark law. My reasons are as follows. 214. First, it is settled law that a trade mark may acquire distinctive character for the purposes of registration if it is distinctive to a significant proportion of the relevant class of persons: see in particular the passages from Windsurfing and Philips quoted above. 215. Secondly, as a matter of logic, it follows that it is necessary to consider the impact of an allegedly infringing sign upon the proportion of the relevant class of persons to whom the trade mark is distinctive. This must be so whether one is considering whether the use of the sign affects, or is liable to affect, the origin function of the trade mark under Article 5(1)(a)/Article 9(1)(a), whether there is a likelihood of confusion under Article 5(1)(b)/Article 9(1)(b) or whether there is a “link” and consequent harm under Article 5(2)/Article 9(1)(c). 216. Thirdly, as a matter of principle, it should be sufficient for a finding of infringement of a trade mark that a significant proportion of the relevant class of persons is likely to be confused. That is both damaging to the trade mark proprietor and contrary to the public interest. 217. Fourthly, I am aware of no decision of the CJEU which supports the proposition that there is a single meaning rule in European trade mark law. By contrast, there is ample authority which supports the opposite proposition. In addition to the cases cited in paragraphs 200-202 above, I would particularly mention three of the cases in which the Court of Justice developed its doctrine that infringement under Article 5(1)(a)/Article 9(1)(a) requires an adverse effect on the functions of the trade mark. 218. In Arsenal the Court of Justice held that Mr Reed’s use of the sign Arsenal was liable to jeopardise the trade mark’s guarantee of origin. In this context it stated (emphasis added): ‘56. Having regard to the presentation of the word ‘Arsenal’ on the goods at issue in the main proceedings and the other secondary markings on them (see paragraph 39 above), the use of that sign is such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor. 57. That conclusion is not affected by the presence on Mr Reed's stall of the notice stating that the goods at issue in the main proceedings are not official Arsenal FC products (see paragraph 17 above). Even on the assumption that such a notice may be relied on by a third party as a defence to an action for trade mark infringement, there is a clear possibility in the present case that some consumers, in particular if they come across the goods after they have been sold by Mr Reed and taken away from the stall where the notice appears, may interpret the sign as designating Arsenal FC as the undertaking of origin of the goods.’ 219. In Anheuser-Busch the Court of Justice, having addressed the requirements for liability under Article 5(1) of the Directive, went on to address the “own name” defence under Article 6(1)(a) of the Directive, which is subject to the proviso that the defendant’s use of the sign is in accordance with honest practices in industrial or commercial matters. In that context, the Court stated at [83] (emphasis added):” ‘In assessing whether the condition of honest practice is satisfied, account must be taken first of the extent to which the use of the third party’s trade name is understood by the relevant public, or at least a significant section of that public, as indicating a link between the third party’s goods and the trade-mark proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party ought to have been aware of that. Another factor to be taken into account when making the assessment is whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered and its protection is sought, from which the third party might profit in selling his goods.’ The Court of Justice repeated this inCéline at [34]. “220. Fifthly, it is clear from the case law of the Court of Justice surveyed above that the average consumer test applies in a number of different areas of unfair competition law (using that term in a broad sense). As with trade marks, so too in the neighbouring fields of unfair commercial practices and misleading and comparative advertising, the case law does not support the existence of a single meaning rule, but contradicts it: see in particular the cases cited in paragraphs 197-199 and 205-207 above. 221. Sixthly, I am not aware of any textbook or academic commentary which supports the existence of a single meaning rule in trade mark law. Nor am I aware of any authority from the superior courts of the other Member States to support the existence of such a rule. 222. Seventhly, I am aware of no domestic authority which supports the proposition that there is a single meaning rule in trade mark law. It is beyond dispute that English trade mark law prior to implementation of the Directive did not have a single meaning rule. Nor does English passing off law have such a rule. While it is possible that trade mark law may have changed as a result of implementation of the Directive and its interpretation by the CJEU, the only case in which this question has been directly addressed prior to the present one is Hasbro Inc v 123 Nahrmittel GmbH[2011] EWHC 199 (Ch) , [2011] ETMR 25, where Floyd J (as he then was) accepted Mr Hobbs QC’s own submission that there was no such rule:” ‘169. The overall assessment must be performed through the eyes of the ‘average consumer’, see, for example, Koninklijke Philips Electronics BV v Remington Consumer Products Ltd (C-299/99) [2002] E.C.R. I-5475; [2002] E.T.M.R. 81 at [65]. Yet, as the above citation from Lloyd recognises, a mark can possess distinctive character if only a proportion of the relevant public recognises that the mark means that the goods originate from a particular undertaking. The proportion of the relevant public which identifies the mark as denoting origin is a factor which the court must take into account in assessing distinctiveness. But it follows from this that the existence of a proportion of the relevant public who have not heard of the mark, or do not regard it as identifying the goods of a particular undertaking is not necessarily destructive of validity. 170. Mr Hobbs also submitted that there is no ‘single meaning rule’ in trade marks of the kind that there was once thought to be, but there is no longer, in the law of malicious falsehood: see Ajinomoto Sweeteners Europe SAS v Asda Stores Ltd[2010] EWCA Civ 609 ; [2010] F.S.R. 30. He relied on two decisions of General Court: Icebreaker Ltd v Office for Harmonisation In the Internal Market (Trade Marks and Designs) (OHIM) (I-112/09) [2010] E.T.M.R. 66 and Travel Service AS v Office for Harmonisation I the Internal Market (Trade Marks and Designs) (OHIM) (T-72/08), judgment of September 13, 2010, not yet reported, both of which concerned relative grounds. The latter case shows that the Court was prepared to take into account conceptual similarity ‘as regards that part of the relevant public which understands English’ – see [57]. Those cases do not have a direct bearing on whether a mark can be distinctive to some and merely descriptive to others, but do indicate that a segmented approach is permissible.’ “223. The only authority I am aware of which comes anywhere near to supporting the existence of a single meaning rule is the following passage from the judgment of Lewison LJ in Interflora (CA I): ‘33. I should also refer to Reed Executive Plc v Reed Business Information Ltd[2004] EWCA Civ 159 ; [2004] E.T.M.R. 56;[2004] RPC 40 . In the course of his judgment in that case Jacob LJ (with whom Auld and Rix LJJ agreed) said (at [82]): ‘Next the ordinary consumer test. The ECJ actually uses the phrase “average consumer” (e.g. Lloyd paras [25] and [26]). The notion here is conceptually different from the “substantial proportion of the public” test applied in passing off (see e.g. Neutrogena Corp v Golden Ltd[1996] RPC 473 ). The ‘“average consumer” is a notional individual whereas the substantial proportion test involves a statistical assessment, necessarily crude. But in the end I think they come to the same thing. For if a “substantial proportion” of the relevant consumers are likely be confused, so will the notional average consumer and vice versa. Whichever approach one uses, one is essentially doing the same thing—forming an overall (“global”) assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptional over-elaboration is apt to obscure this and is accordingly unhelpful. It may be observed that both approaches guard against too “nanny” a view of protection—to confuse only the careless or stupid is not enough.’ 34. I agree entirely that the average consumer (in trade mark infringement) is conceptually different from the substantial proportion of the public test (in passing off). What I find difficult to accept is that they come to the same thing. If most consumers are not confused, how can it be said that the average consumer is? I do not think that this particular paragraph of Jacob LJ's judgment is part of the ratio of the case and, with the greatest of respect, despite Jacob LJ's vast experience of such cases I question it. In some cases the result will no doubt be the same however, the question is approached; but I do not think that it is inevitable. 35. There is, of course, no doubt that a valid survey can be an accurate diagnostic or predictive tool. They are used daily to sample public opinion on a variety of different topics. For example, they are used to gauge support for rival candidates in an election and to predict the eventual result. Suppose that a valid survey shows that in an election 49 per cent of the electorate support candidate A and 51 per cent support candidate B. It would be possible to say on the strength of such a survey that B will win the election. It would also be possible to say that a substantial proportion of the electorate will vote for candidate A. But what a survey does not, I think, tell you is: for whom will the average voter vote? In cases where acquired distinctiveness of a mark is in issue a survey may accurately identify that proportion of the relevant public which recognises the mark as a badge of trade origin. It will then be for the fact finding tribunal, with the aid of such a survey, to decide whether a significant proportion of the relevant public identify goods as originating from a particular undertaking because of the mark: see Windsurfing Chiemsee Produktions-und-VertriebsGmbH v Boots-und-Segelzubehor(C-108/97)[1999] ECR I-2779 ; [1999] ETMR 585 at [52], [53]. 36. In our case the question is whether M & S's advertisement would enable a reasonably well-informed and reasonably observant internet user to grasp without undue difficulty that Interflora and M & S were independent. This, as the Court of Justice has emphasised is not a question of counting heads, but is a qualitative assessment. The fact that some internet users might have had difficulty in grasping that Interflora and M & S were independent is not sufficient for a finding of infringement. If, by analogy with Neutrogena and Chocosuisse, the court were to conclude that most internet users would have grasped that, but that some would not, I cannot see that the court would be any closer to answering the legal question.’ 224. In my judgment this passage does not support the existence of a single meaning rule for the following reasons. First, nowhere in this passage does Lewison LJ say that there is a single meaning rule. Secondly, given that the single meaning rule which exists in English defamation law is widely regarded as anomalous, that the Court of Appeal forcibly ejected the single meaning rule from the English law of malicious falsehood in Ajinomoto Sweeteners Europe SAS v Asda Stores Ltd[2010] EWCA Civ 609 ,[2010] FSR 30 (thereby bringing that part of English unfair competition law into line with the Court of Justice’s jurisprudence in that field) and that there is no such rule in passing off, it would be very surprising if Lewison LJ had intended to adopt such a rule unless it was clearly required by the case law of the Court of Justice. Thirdly, Lewison LJ expressly accepts that a trade mark is distinctive if a significant proportion of the relevant public identify goods as originating from a particular undertaking because of the mark. Thus he accepts that there is no single meaning rule in the context of validity. As I have said, that is logically inconsistent with a single meaning rule when one comes to infringement. Fourthly, the reason why it is not necessarily sufficient for a finding of infringement that “some” consumers may be confused is that, as noted above, confusion on the part of the ill-informed or unobservant must be discounted. That is a rule about the standard to be applied, not a rule requiring the determination of a single meaning. If a significant proportion of the relevant class of consumers is confused, then it is likely that confusion extends beyond those who are ill-informed or unobservant. Fifthly, Lewison LJ does not refer to many of the authorities discussed above, no doubt because they were not cited. Nor does he discuss the nature of the test for the assessment of likelihood of confusion laid down by the Court of Justice. The legislative criterion is that “there exists a likelihood of confusion on the part of the public”
‘Next the ordinary consumer test. The ECJ actually uses the phrase “average consumer” (e.g. Lloyd paras [25] and [26]). The notion here is conceptually different from the “substantial proportion of the public” test applied in passing off (see e.g. Neutrogena Corp v Golden Ltd[1996] RPC 473 ). The ‘“average consumer” is a notional individual whereas the substantial proportion test involves a statistical assessment, necessarily crude. But in the end I think they come to the same thing. For if a “substantial proportion” of the relevant consumers are likely be confused, so will the notional average consumer and vice versa. Whichever approach one uses, one is essentially doing the same thing—forming an overall (“global”) assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptional over-elaboration is apt to obscure this and is accordingly unhelpful. It may be observed that both approaches guard against too “nanny” a view of protection—to confuse only the careless or stupid is not enough.’
“It again seems clear from this that there can be a likelihood of confusion within the meaning of Article 9(1)(b) at the point when a consumer views an advertisement, whether or not the advertisement leads to a sale and whether or not the consumer remains confused at the time of any such sale.”
“Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion (SABEL, paragraph 24), and therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see Canon, paragraph 189).”
“ . . . Where descriptive words are included in a registered trade mark, the courts have always and rightly been exceedingly wary of granting a monopoly in their use.”
“53. Accordingly, the suffix " MEN" in the mark claimed is likely to carry a suggestive or even descriptive connotation for the relevant public that the " clothing, footwear and headwear" covered by that mark are intended for male customers. The Court notes that the public will not generally consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark. 54. It follows that, from a conceptual viewpoint, the first syllable "BUD" must be viewed as the dominant element of the mark claimed.”
“there can be little doubt that a likelihood of confusion exists between the defendant's use of the sign or mark “COMPASS LOGISTICS” in relation to its business consultancy services and the notional use of the mark “COMPASS” used in relation to business consultancy services, including those in relation to which the defendant specialises. The dominant part of the defendant's mark is the word “compass”
“105…the essential difference between each of the signs and the trade mark is the addition of the word CAPITAL. (Counsel for the defendants did not suggest that the presence of the coat of arms in the logo made any difference.) 106 Counsel for the defendants submitted that the addition of the word CAPITAL sufficed to avoid a likelihood of confusion. I disagree. As discussed above, CAPITAL is descriptive, or at least non-distinctive, for financial services, and in particular investment services. Given the distinctiveness of the trade mark, the identity of the services and the non-distinctiveness of the word CAPITAL, I consider that there is a manifest likelihood of confusion on the part of both types of consumer in the case of all five signs.”
“This leaves open a number of points. First, neither that case nor any subsequent case has considered the relevant date where there are different types of use of the sign each giving rise to different issues on likelihood of confusion (e.g. because they are used in a quite different context). Counsel for the Defendants submitted that Levi Strauss should be read in the light of the CJEU's subsequent decision inCase C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd[2008] ECR I-4231 , which requires a contextual assessment of the use of the sign, to mean that likelihood of confusion was to be judged at the date the sign in question began to be used in the particular manner and context complained of. If the defendant used the sign in a materially different manner or context at a later date, a new global assessment had to be made as of that date. I accept that submission.”
“30. When comparing the signs, the Board notes that the word “SKY” which is the sole element of the earlier mark, is perfectly recognizable at the beginning of the mark applied for. In this regard, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see, to that effect, judgment of4 May 2005 , T-22/04, “Westlife”, para 40). 31. Moreover, the common elements appear at the beginnings of the marks at issue. In this regard, one has to recall that consumers generally pay greater attention to the beginning of a word sign than to the end (see judgment of25 March 2009 , T-109/07, “Spa Therapy”, para 30). 32. The word element “SKY” may also be perceived by a substantial portion of the relevant consumers as playing an independent role in the mark applied for (see, to this effect, judgment of6 October 2005 , C-120/04, “Thomson Life”, para 37). It may thus remain in the overall visual impression made by the mark or the imperfect picture which the relevant consumer will keep in mind. 33. In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. 34. The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) in comparison to other elements. The element “DRIVE” contained in the contested sign will be associated with the concept “A device that spins disks or tapes in order to read and write data: for example, a hard drive, floppy drive, CD-ROM drive or tape drive” (Computer High-tech Dictionary accessible online, as of11 January 2012 ). 35. Bearing in mind that the relevant services are related to data storage, it is considered that this element is weak for these services. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. (see judgment of14 July 2011 , T-160/09, “Oftal Cusi”, para 89).”
“It must be established whether the consumers targeted, including those who are confronted with the goods after they have left the third party’s point of sale, are likely to interpret the sign, as it is used by the third party, as designating or tending to designate the undertaking from which the third party’s goods originate.…”
“evidence of actual confusion supports the conclusion that there is a likelihood of confusion.”
“it is usually quite hard to find people who have been confused, because confusion by its very nature doesn’t come to light, and it is even harder to persuade confused people to come to court to give evidence.”
“15. In reaching that conclusion the judge first held that the evidence was evidence of real world confusion. He quoted from the witness statements of four of the witnesses, although he did not at that stage refer to the raw data themselves. I regret to say that in my judgment the judge was misled by the impression created by the witness statements when compared to the raw data on which they are based. The judge said at [40]:” ‘Where there is evidence of actual confusion, however, there have been many cases in which the courts have found it of assistance to hear from people who were confused and who are prepared to come to court. Usually, it is quite hard to find people who have been confused, because confusion by its very nature often doesn't come to light, and it is even harder to persuade confused people to come to court to give evidence. Thus the available sample is often a small one. But experience shows that it is rarely completely repetitious. On the contrary, it often shows a range of responses to the sign in issue. In my view, it is helpful for the court to receive first hand evidence of the range of responses from the people who had those responses.’ 16. One problem in this case is that the evidence of the 13 witnesses is not representative of the range of responses to the questions. Interflora acknowledge that; because they have disclosed the answers to the questionnaires of a further 24 interviewees who thought that there was no connection between Interflora and M & S. The judge brushed aside M & S's complaint on that score. He said at [43]: ‘Counsel for Marks & Spencer complained that no statements had been obtained from those 24, but I see no need for Interflora to have done so. If Marks & Spencer wish to obtain statements from those witnesses, their contact details have been provided.’ 17. In my judgment, with all respect, this is an inadequate ground for dismissing the complaint. Part of the concern about the admission of this kind of evidence is that it is too partisan (or, as I put it in Interflora 1, it is evidence from a skewed selection of witnesses). In Interflora 1 I said at [143]: ‘In the general run of cases it seems to me to place an undue and unfair burden on the other party for one party to tender in evidence witness statements from selected respondents to a questionnaire without even undertaking to produce a selection that demonstrates the full range of answers to the questions. As Mr Hobbs said, that places the burden on the defendant to disprove the validity of the selection, rather than on the claimant to validate it. Such a burden could in my judgment only be justified if the party tendering the evidence can show that it is likely to have a real impact on the outcome of the trial.” 18. In my judgment that is what the judge has done in this case. He has left it to M & S to amplify the range of responses to the questionnaire; and thus has imposed upon them the burden of disproving the validity of the selection. Mr Silverleaf submitted that any deficiencies in the witness statements could be explored and exposed in cross-examination for which Interflora had provided all the relevant material. But that, too, casts the burden on M & S to disprove the validity of the evidence rather than requiring Interflora to validate it at the "gatekeeping" stage. 19. The judge acknowledged that witness statements are rarely (if ever) the unmediated words of the witness himself. He continued at [49]: ‘It is often been remarked that one of the problems with witness statements is that they often contain, in effect, the answers to a series of leading questions. In some cases judges have passed comments about witness statements being "heavily lawyered", meaning that the wording of the statement was more the product of the lawyer than of the witness. That is, of course, to be deprecated. Nevertheless, witness statements are, and have for some years been, an established feature of English civil litigation procedure. That being so, it would not be justified to require higher standards for the admission of consumer evidence in trade mark cases. That is particularly so where the gathering of the evidence has been made as transparent as it is here.’ 56. It is not clear to me what the judge meant by referring to "higher standards" for the admission of consumer evidence in trade mark cases. As paragraph 18.1 ofPD 32 makes clear, a witness statement "must, if practicable, be in the intended witness's own words." We know what the witnesses' own words were: they are recorded in the answers to the questionnaire. It is not a question of higher standards: it is a question of ensuring that standards are complied with. If, therefore, the judge thought that he was being asked to impose higher standards, I respectfully think that he was wrong. In addition, if the evidence proposed to be called is relied on as consumers' spontaneous reaction to an allegedly infringing sign, it is all the more important to eliminate answers to leading questions which almost by definition do not produce spontaneous reactions. This was at the heart of guideline (iv) of the Whitford guidelines (see Imperial Group plc v Philip Morris Ltd[1984] RPC 293 summarised in Interflora 1 at [61]): ‘…the questions asked must not be leading; and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put.’” ‘Where there is evidence of actual confusion, however, there have been many cases in which the courts have found it of assistance to hear from people who were confused and who are prepared to come to court. Usually, it is quite hard to find people who have been confused, because confusion by its very nature often doesn't come to light, and it is even harder to persuade confused people to come to court to give evidence. Thus the available sample is often a small one. But experience shows that it is rarely completely repetitious. On the contrary, it often shows a range of responses to the sign in issue. In my view, it is helpful for the court to receive first hand evidence of the range of responses from the people who had those responses.’ ‘Counsel for Marks & Spencer complained that no statements had been obtained from those 24, but I see no need for Interflora to have done so. If Marks & Spencer wish to obtain statements from those witnesses, their contact details have been provided.’ ‘In the general run of cases it seems to me to place an undue and unfair burden on the other party for one party to tender in evidence witness statements from selected respondents to a questionnaire without even undertaking to produce a selection that demonstrates the full range of answers to the questions. As Mr Hobbs said, that places the burden on the defendant to disprove the validity of the selection, rather than on the claimant to validate it. Such a burden could in my judgment only be justified if the party tendering the evidence can show that it is likely to have a real impact on the outcome of the trial.” ‘It is often been remarked that one of the problems with witness statements is that they often contain, in effect, the answers to a series of leading questions. In some cases judges have passed comments about witness statements being "heavily lawyered", meaning that the wording of the statement was more the product of the lawyer than of the witness. That is, of course, to be deprecated. Nevertheless, witness statements are, and have for some years been, an established feature of English civil litigation procedure. That being so, it would not be justified to require higher standards for the admission of consumer evidence in trade mark cases. That is particularly so where the gathering of the evidence has been made as transparent as it is here.’ ‘…the questions asked must not be leading; and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put.’”
“One of the objections to the witness collection exercise .. is that the evidence thus collected is not the spontaneous reaction of members of the public who have been exposed to the allegedly infringing sign or advertisement, but is evidence obtained under artificial conditions by applying artificial stimuli. If there is evidence of consumers who have been confused in the real world, there can be no objection to calling it. Lewison LJ went on to say: “in the general run of cases where witnesses have been identified by a tailored series of questions they will have been led towards a particular mindset which no longer represents the unstimulated evidence of people in the real world.”
‘this is not a particularly onerous requirement.’
“.. the degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products and services covered by that trade mark.”
“all the relevant facts of the case, in particular the market-share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.’ [General Motors at ¶27].”
“Moreover, although the mark must be known by a significant part of the public in a substantial part of the territory of the European Union, in an appropriate case the territory of a single Member State may suffice for this purpose: seeCase C-301/07 Pago International GmbH[2009] ECR I-9429 . ”
“.. - the degree of similarity between the conflicting marks; - the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; - the strength of the earlier mark's reputation; - the degree of the earlier mark's distinctive character, whether inherent or acquired through use; - the existence of the likelihood of confusion on the part of the public. [Interflora at para 190]”
“52 Accordingly, the proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of detriment (SPA-FINDERS, cited above in paragraph 26, paragraph 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (Case T-181/05 Citigroup and Citibank v OHIM - Citi (CITI)[2008] ECR II-669 , paragraph 78).” 53 It cannot, however, be required that, in addition to those elements, the proprietor of the earlier mark must show an additional effect, caused by the introduction of the later mark, on the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered. Such a condition is not set out in Article 8(5) of Regulation No 207/2009 or in Intel Corporation, cited above in paragraph 27. 54 So far as concerns paragraph 77 of Intel Corporation, cited above in paragraph 27, it is apparent from the choice of words 'it follows' and from the structure of paragraph 81 of that judgment that the change in the economic behaviour of the consumer, to which the applicant refers in support of its claim, is established if the proprietor of the earlier mark has shown, in accordance with paragraph 76 of Intel Corporation, that the mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.”
“72. Lastly, as regards, more particularly, detriment to the distinctive character of the earlier mark, the answer to the second part of the third question must be that, first, it is not necessary for the earlier mark to be unique in order to establish such injury or a serious likelihood that it will occur in the future. 73. A trade mark with a reputation necessarily has distinctive character, at the very least acquired through use. Therefore, even if an earlier mark with a reputation is not unique, the use of a later identical or similar mark may be such as to weaken the distinctive character of that earlier mark. 74. However, the more 'unique' the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character. . . . . . 77. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. 79. . . . Article 4(4) (a) of the Directive is to be interpreted as meaning that whether a use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. 80. The fact that: - the earlier mark has a huge reputation for certain specific types of goods or services and - those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and - the earlier mark is unique in respect of any goods or services, and for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark to mind, is not sufficient to establish that the use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinct character or the repute of the earlier mark, within the meaning of Article 4(4)(a) of the Directive.”
“..
“What this requires, as a rule, is that the user (of the mark) is under such a compulsion to use this very mark that he cannot honestly be asked to refrain from doing so regardless of the damage the owner of the mark would suffer from such use or that the user is entitled to the use of the mark in his own right and does not have to yield this right to that of the owner of the mark.”
“What do you think of this as the name of an online storage service for photos, music and other files? Q2: “Why do you say that?”
“Qu 1 – You think of drive as hard drive, I would know what it was. Qu 2 – You think of online because Sky is a big company that is all over the Internet.”
“I presumed the front half of the word “SKYDRIVE” was to do with Sky television and that “drive” meant hard drive and that my reference to the “big company” was Sky television.”
“1001: Qu 1 – SkyDrive quite good. Qu 2 – It’s unique, no one else has got and its all like with the internet. The internet is in the air, its about putting the files in the sky up on the internet.” 1014: Qu 1 – Its fine yes. Qu 2 – I guess drive indicates you’re linking up with something on the internet.” “2008: Qu 1 – quite a good name its quite appropriate I first thought it was transport of some sort. Qu 2 – Because of sky’s the limit your hard drive its something to do with computers.” `’4012: Qu 1 – Yes I suppose it would possibly go with it. Qu 2 – well you are storing on a virtual hard drive it’s a play on words. Some people may find it confusing if they are not IT literate. 2017: Qu 1 – Think it’s a good name. It’s a drive to store files. Catch on SkyDrive take it you can share stuff. Popular. Qu 2 – Catchy name, not long, not forget it, it will do what it says.”
‘not withstanding the Defendants’ criticisms, the survey does give a feel for the reaction of members of the public to the Defendants’ proposed newspaper.’
“The essence of the action for passing off is a deceit practised on the public and it can be no answer, in a case where it is demonstrable that the public has been or will be deceived, that they would not have been if they had been more careful, more literate or more perspicacious”
“It should not be thought that the 9 out of 158 letters evincing confusion represents the totality of it (though if representative of the degree of confusion amongst the public as a whole it would certainly be enough).”
“11. It must be noted that Lord Oliver does not limit damage to a particular sort of damage, particularly direct diversion of sales caused by misrepresentation. If that were so, passing off would fail in one of its key purposes – protection of the property in the goodwill. The books are full of cases where the action has succeeded where there has not been, and even could not be, direct loss by diversion of sales. 12. A good example is Ewing v Buttercup Margarine [1917] 2 Ch . The plaintiff had an established retail business in Scotland and Northern England. It traded under the name Buttercup Dairy Company and was known as Buttercup Dairy or simply Buttercup. The Defendant was a new company called the Buttercup Margarine Company, the name having been chosen without knowledge of the plaintiff. Its directors intended to make and deal in margarine, though its objects were wider. There was no intention to use Buttercup for the margarine. Passing off was established before Astbury J. In the Court of Appeal the respondents were not even called upon, Lord Cozens Hardy MR saying the case was “well over the line”. . . . 13. Warrington LJ put it in this way: “ . . . . . Looking at those two names, it seems to me obvious that a trader or a customer who has been in the habit of dealing with the plaintiff might well think that the plaintiff had adopted the name Buttercup Margarine Company, Limited, as his own name for the purpose of the margarine branch if his business, or for the purposes, if you will, of doing what it is said the defendants are going to do, namely to make their own margarine instead of buying it in the market. If that be so, it seems to me that the plaintiff has proved enough. He has proved that the defendants have adopted such a name as may lead people who have dealings with the plaintiff to believe that the defendants’ business is a branch of or associated with the plaintiff’s business. To induce the belief that my business is a branch of another man’s business may do that other man damage in various ways. The quality of goods I sell, the kind of business I do, the credit or otherwise which I enjoy are all things which may injure the other man who is assumed wrongly to be associated with me. And it is just that kind of injury that what the defendants have done here is likely to occasion.” 14. A more modern statement of the kind of damage which , if caused by misrepresentation, is actionable, was given by Slade LJ in Chelsea Man v Chelsea Girl[1987] RPC 189 at p 202: “(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 by or is wrongly connected with that business.”
“The principle enshrined in these provisions is the public interest in preventing the registration of trade marks devoid of any distinctive character, or consisting exclusively of descriptive signs or indications; as was explained in Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) [2004] E.C.R. I-1619 (“the Postkantoor case”): “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.” “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.”
“ . .. . the word NOW has been widely used entirely descriptively in this sector. For example, it is commonly used in electronic programme guides and online programme guides to identify the programme currently showing, as well as in television continuity announcements and graphics. It is also commonly used in advertising and promotional materials, in particular for on-demand services such as those offered by the likes of Netflix, Lovefilm and BlinkBox.”
“A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: . . . . (b) where the applicant was acting in bad faith when he filed the application for the trade mark.”
“The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods and services falling within this particular class.”
“… the goods and services for which the protection of the trade mark is sought [must] be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. … An applicant for a … trade mark who uses all the general indications of a particular class heading… to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.”
“In order to determine whether the applicant is acting in bad faith …, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.” 36. In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd[2009] EWCA 110 Civ,[2010] RPC 16 at [52] Lloyd LJ, with whom Jacob and Stanley Burnton LJJ agreed, summarised the guidance of the Court of Justice in Lindt as follows: “Attention is to be focussed on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. ... The court regarded it as relevant that a third party had long used a sign for an identical or similar product capable of being confused with the mark applied for, and that that sign enjoyed some degree of legal protection. In such a case the applicant's aim in obtaining registration might be to compete unfairly with a competitor who is using a sign which had gained some degree of legal protection. The court also regarded it as relevant that the registered mark consisted of the entire shape and presentation of the product, that being restricted for technical or commercial reasons (in respect of which it no doubt had in mind, for example, the essential shape of a rabbit or a hare), so that the registration, if valid, would prevent competitors not only from using a particular sign but also from marketing similar products at all.” 37. Counsel for Och-Ziff submitted that neither the judgment of the Court of Justice in Lindt nor that of the Court of Appeal in Cipriani had affected the validity of what I had said in Cipriani in the following paragraphs, in particular in the passages emphasised: “189. In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use ofthe mark, he may still believe that he is entitled to registration. The applicant may not intend to seek to enforce the trade mark against the third parties and/or may know or believe that the third parties would have a defence to a claim for infringement on one of the bases discussed above. In particular, the applicant may wish to secure exclusivity in the bulk of the Community while knowing that third parties have localrights in certain areas. An applicant who proceeds on the basis explicitly provided for in Article 107 can hardly be said to be abusing the Community trade mark system. 190. Nor in my judgment does it amount to bad faith if what the applicant seeks to register is not the actual trade mark he himself uses but merely the distinctive part of his trade mark, the other part of which is descriptive or otherwise non-distinctive, and third parties are also using the distinctive part with different non-distinctive elements. It is commonplace for applicants to apply to register the distinctive elements of their trade marks, and with good reason. Moreover, in such a case the applicant would be unlikely to have an Article 9(1)(a) claim against the third parties, yet as noted above counsel for the Defendants accepted that the ability to make an Article 9(1)(b) claim was not enough to constitute bad faith.” “In order to determine whether the applicant is acting in bad faith …, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.” “Attention is to be focussed on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. ... The court regarded it as relevant that a third party had long used a sign for an identical or similar product capable of being confused with the mark applied for, and that that sign enjoyed some degree of legal protection. In such a case the applicant's aim in obtaining registration might be to compete unfairly with a competitor who is using a sign which had gained some degree of legal protection. The court also regarded it as relevant that the registered mark consisted of the entire shape and presentation of the product, that being restricted for technical or commercial reasons (in respect of which it no doubt had in mind, for example, the essential shape of a rabbit or a hare), so that the registration, if valid, would prevent competitors not only from using a particular sign but also from marketing similar products at all.” “189. In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use ofthe mark, he may still believe that he is entitled to registration. The applicant may not intend to seek to enforce the trade mark against the third parties and/or may know or believe that the third parties would have a defence to a claim for infringement on one of the bases discussed above. In particular, the applicant may wish to secure exclusivity in the bulk of the Community while knowing that third parties have localrights in certain areas. An applicant who proceeds on the basis explicitly provided for in Article 107 can hardly be said to be abusing the Community trade mark system. 190. Nor in my judgment does it amount to bad faith if what the applicant seeks to register is not the actual trade mark he himself uses but merely the distinctive part of his trade mark, the other part of which is descriptive or otherwise non-distinctive, and third parties are also using the distinctive part with different non-distinctive elements. It is commonplace for applicants to apply to register the distinctive elements of their trade marks, and with good reason. Moreover, in such a case the applicant would be unlikely to have an Article 9(1)(a) claim against the third parties, yet as noted above counsel for the Defendants accepted that the ability to make an Article 9(1)(b) claim was not enough to constitute bad faith.”