“46. Revocation of registration 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 …. (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.”
“” “245. First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period. 246. Secondly, the goods or services for which the mark is registered must be considered. If the mark is registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of subcategories capable of being viewed independently, use of the mark in relation to one or more of the subcategories will not constitute use of the mark in relation to all of the other subcategories. 247. Thirdly, it is not possible for a proprietor to use the mark in relation to all possible variations of a product or service. So care must be taken to ensure this exercise does not result in the proprietor being stripped of protection for goods or services which, though not the same as those for which use has been proved, are not in essence different from them and cannot be distinguished from them other than in an arbitrary way. 248. Fourthly, these issues are to be considered from the viewpoint of the average consumer and the purpose and intended use of the products or services in issue. Ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark.”
“19. For the tribunal to determine in relation to what goods or services there has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. Use should be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. 20. Providing evidence of use is not unduly difficult. If an undertaking is sitting on a registered trade mark, it is good practice in any event from time to time review the material that it has to prove use of it. Courts and tribunals are not unduly harsh as to the evidence they are prepared to accept as establishing use. (…) 22. The burden lies on the registered proprietor to prove use. However, that and other cases show that there is no particular way in which use must be established. (…) it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more, so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive.”
“8(1) Sections … 46 apply in relation to a comparable trade mark (EU), subject to the modifications set out below. (2) Where the period of five years referred to in sections … 46(1)(a) or (b) (the “five-year period”) has expired before IP completion day— (a ) the references in sections . … (insofar as they relate to use of a trade mark) 46 to a trade mark are to be treated as references to the corresponding EUTM; and (b) the references in sections …46 to the United Kingdom include the European Union.”
“” “Advertising, marketing and publicity services; business information services, promotional services;" And similarly in relation to the 160 mark: “Advertising, marketing and publicity services; business information services”
“EasyGroup has launched a£5m marketing campaign to back the launch of … easyProperty.com”
“38. Communication of information by electronic means; Communication services over computer networks; Data communication services; Data transmission”
"Statistics provided by IAM-SOLD ( easyProperty's auction partner)…"
“7. In order to establish infringement under art.9(2)(b) of the Regulation/art.10(2)(b) of the Directive, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public. In the present case, there is no issue as to conditions (i)–(v). 8. The manner in which the requirement of a likelihood of confusion in art.9(2)(b) of the Regulation and art.10(2)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the Court of Justice of the EU in a large number of decisions. The Trade Marks Registry has adopted a standard summary of the principles established by these authorities for use in the registration context. The current version of this summary, which was approved by this court in Comic Enterprises Ltd v Twentieth Century Fox Film Corp[2016] EWCA Civ 41 ; [2016] F.S.R. 30 at [31]–[32] (Kitchin LJ), is as follows: “(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 creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.” 9. The same principles are applicable when considering infringement, although it is necessary for this purpose to consider the actual use of the sign complained of in the context in which the sign has been used: … As Kitchin LJ (with whom Sir John Thomas PQBD and Black LJ agreed) put it in Specsavers International Healthcare Ltd v Asda Stores Ltd[2012] EWCA Civ 24 ; [2012] F.S.R. 19 at [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.” 10. It is well-established that there are two main kinds of confusion which trade mark law aims to protect a trade mark proprietor against (see in particular Sabel BV v Puma AG (C-251/95) [1997] E.C.R. I-6191 at [16]). The first, often described as “direct confusion”, is where consumers mistake the sign complained of for the trade mark. The second, often described as “indirect confusion”, is where the consumers do not mistake the sign for the trade mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the trade mark or from an undertaking which is economically linked to the undertaking responsible for goods or services denoted by the trade mark. 11. In LA Sugar Ltd v Back Beat Inc (O/375/10) Iain Purvis QC sitting as the Appointed Person said: “16. Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning—it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It thereforerequires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: ‘The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earliermark’. 17. Instances where one may expect the average consumer to reach such a conclusion tend to fall into one or more of three categories: (a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right (‘26 RED TESCO’ would no doubt be such a case). (b) where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as ‘LITE’, ‘EXPRESS’,‘WORLDWIDE’, ‘MINI’ etc.). (c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension (‘FAT FACE’ to ‘BRAT FACE’ for example).” 12. This is a helpful explanation of the concept of indirect confusion, which has frequently been cited subsequently, but as Mr Purvis made clear it was not intended to be an exhaustive definition. For example, one category of indirect confusion which is not mentioned is where the sign complained of incorporates the trade mark (or a similar sign) in such a way as to lead consumers to believe that the goods or services have been co-branded and thus that there is an economic link between the proprietor of the sign and the proprietor of the trade mark (such as through merger, acquisition or licensing).’” “(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 creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.” “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.” “16. Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning—it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It thereforerequires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: ‘The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earliermark’. 17. Instances where one may expect the average consumer to reach such a conclusion tend to fall into one or more of three categories: (a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right (‘26 RED TESCO’ would no doubt be such a case). (b) where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as ‘LITE’, ‘EXPRESS’,‘WORLDWIDE’, ‘MINI’ etc.). (c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension (‘FAT FACE’ to ‘BRAT FACE’ for example).”
“the matters to be taken into account in assessing similarity were explained by the Court of Justice in Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc (C-39/97) EU:C:1998:442; [1999] F.S.R. 332; [1999] R.P.C. 117 at [23] (as corrected): ‘In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.’” ‘In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.’”
“95. The question whether the use of a sign infringes a trade mark pursuant to Article 10(2)(a),(b) of the Directive or Article 9(2)(a),(b) of the Regulation falls to be assessed as at the date that the use of the sign was commenced: seeCase C-145/05 Levi Strauss & Co v Casucci SpA[2006] ECR I-3703 . Where the use of the sign commenced more than six years (i.e. the limitation period) before the claim form, then the relevant date is six years before the date of the claim form: see Stichting BDO v BDO Unibank Inc[2013] EWHC 418 (Ch) , [2013] ETMR 31 at [98].”
“97. Turning to the infringement allegations in the present case, counsel for the Defendants submitted that the correct approach was as follows: i) In the case of the Claimants' claim in respect of Unibank's advertisements, these should be treated as separate alleged infringing acts and judged as at the date of each advertisement. ii) In the case of the Claimants' case in respect of the Defendants' remittance businesses, the Court should consider the position as at the date each of the Second to Fifth Defendants started its use of the sign BDO Remit, namely 2004, 2007, 2007 and 2006 respectively. iii) In so far as any of the alleged infringements date from prior to10 December 2007 , partial revocation of the Trade Mark with effect from that date does not provide a defence; but in so far as the alleged infringements continue after that date, the Court should if necessary re-assess the position taking the partial revocation into account. 98. I accept these submissions, subject to one small qualification. The qualification is that infringements prior to17 May 2005 (six years before the Claim Form was issued) are barred by limitation in any event.”
“45 … It is not necessary for present purposes to go further into [certain questions arising out of the authorities], for what can be said with confidence is that, if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion.”
“179. More importantly, counsel for W3 submitted that such activities did not amount to the provision of the service of "advertising" under the relevant trade mark. In support of this submission, he relied upon the decision of the Court of First Instance inCase T-143/16 Intesa Sanpaolo SpA v European Union Intellectual Property Office [EU:T:2017:687] that the publication and distribution of brochures relating to financial services did not amount to the provision of advertising services. Perhaps more pertinently, in Avnet Inc v Isoact Ltd[1998] FSR16 Jacob J held that an internet service provider which provided its customers with a hosted webpage which the customers could use to advertise their goods or services was "not providing advertising … services in the way that, for example, an advertising agent does". In my judgment, however, the present case is distinguishable from those two cases. If one takes the easyJet in-flight magazine by way of example, then I consider that, in substance, easyJet was providing a service to the advertisers that can fairly be described as "advertising": it was advertising their businesses to its passengers.”
“10(3) A person infringes a registered trade mark if he uses in the course of trade a sign which— (a) is identical with or similar to the trade mark, and (c) 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 the repute of the trade mark.”
“110. The concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the services covered by the mark applied for, with the result that the marketing of those services can be made easier by that association with the earlier mark with a reputation. 111. Accordingly, the risk that the use without due cause of the mark applied for will take unfair advantage of the distinctive character or the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and buys the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a repute.”
“107. So far as a requirement for a change in economic behaviour is concerned, the CJEU has held that proof that the use of the sign is or would be detrimental to the distinctive character of the trade mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the trade mark is registered or a serious likelihood that such change will occur in the future: see Case C-383-12 Environmental Manufacturing LLP v OHIM (judgment of14 November 2013 ) (at [34]–[43]). It by no means follows that there is a requirement for evidence of a change in the economic behaviour of consumers of the trade mark proprietor's goods or services in order to establish the taking of unfair advantage of the distinctive character or repute of the trade mark. In my judgment, it should be sufficient to show a change in economic behaviour of customers for the defendants' goods or services in order to show that the use of the sign is taking unfair advantage. In Jack Wills Ltd v House of Fraser (Stores) Ltd[2014] EWHC 110 (Ch) ;[2014] FSR 39 , Arnold J proceeded on an assumption to that effect as a result of a concession by counsel (see paragraph 82) but I consider the concession to be correctly made. I do not think, however, that change of economic behaviour provides the answer to this case. The relevant economic behaviour must be that which occurs in response to ASI's use of the sign ARGOS in relation to the service of the provision of advertising space. Had the sign not been used, internet users would neither have arrived at the site nor clicked on the ads. Even if the arrival at the site is not a relevant change of economic behaviour, clicking on the ads must amount to such a change.”
“The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective purchasers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an instrument or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover he can blame no one but himself…”