‘(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.’
‘29. …goods can be considered identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark.’
‘If the mark and the sign have both been used and there has been actual confusion between them, this may be powerful evidence that their similarity is such that there exists a likelihood of confusion. Conversely, the absence of actual confusion despite side by side use may be powerful evidence that they are not sufficiently similar to give rise to a likelihood of confusion. This may not always be so, however. The reason for the absence of confusion may be that the mark has only been used to a limited extent or in relation to only some of the goods or services for which it is registered, or in such a way that there has been no possibility of the one being taken for the other. So there may, in truth, have been limited opportunity for real confusion to occur.’
‘99 No evidence of actual confusion. Counsel for House of Fraser relied strongly on the absence of any evidence of actual confusion. As I have said in a number of judgments, absence of evidence of actual confusion is not necessarily fatal to a claim under art.5(1)(b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. Other relevant factors are the scale of the use complained of and the likelihood of actual confusion being detected.’
‘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.’
‘… in light of the foregoing discussion we do not accept that a finding of infringement is precluded by a finding that many consumers, of whom the average consumer is representative, would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court then we believe it may properly find infringement.’
‘(4) 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. (5) The average consumer is a hypothetical person or, as he has been called, a legal construct; he is a person who has been created to strike the right balance between the various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply. (6) The average consumer is not a statistical test. The national court must exercise its own judgment in accordance with the principle of proportionality and the principles explained by the Court of Justice to determine the perceptions of the average consumer in any given case in the light of all the circumstances. The test provides the court with a perspective from which to assess the particular question it has to decide. (7) In a case involving ordinary goods and services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up its own mind about the particular issue it has to decide in the absence of evidence and using its own common sense and experience of the world. A judge may nevertheless decide that it is necessary to have recourse to an expert’s opinion or a survey for the purpose of assisting the court to come to a conclusion as to whether there is a likelihood of deception. (8) The issue of a trade mark’s distinctiveness is intimately tied to the scope of the protection to which it is entitled. So, in assessing an allegation of infringement under art.5(1)(b) of the Directive arising from the use of a similar sign, the court must take into account the distinctiveness of the trade mark, and there will be a greater likelihood of confusion where the trade mark has a highly distinctive character either per se or as a result of the use which has been made of it. It follows that the court must necessarily have regard to the impact of the accused sign on the proportion of consumers to whom the trade mark is particularly distinctive. (9) If, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court then it may properly find infringement.’
‘161. For the reasons I have given at [77] to [87] above, I believe that in assessing the likelihood of confusion under Article 9(1)(b), the court must take into account all the circumstances of the allegedly infringing use that are likely to operate in the average consumer’s mind in considering the sign and the impression it is likely to make on him. It follows that it is appropriate to consider the cumulative effect of the signs in issue, subject to the requirement explained by this court in L’
‘164. In assessing whether the use of the Asda logo has taken unfair advantage of the distinctive character or repute of the Specsavers Shaded and Unshaded logo marks it is of course necessary to carry out a global assessment. So I must also have regard to all relevant circumstances, including the significant reputation attaching to Specsavers’ marks, the fact that the goods are identical and the fact that it was Asda’s intention to target this campaign at Specsavers and to convey the message that Asda offered good, if not better, value. Taking all these matters into account I am satisfied that the use of the Asda logo (in both its forms) as part of the campaign including the straplines was such as to create a link with Specsavers Shaded and Unshaded logo marks in the mind of the average consumer; that this link did confer an advantage upon Asda; and that this advantage was unfair and without due cause. As in the case of the straplines, the use of the Asda logo permitted Asda to benefit from the power of attraction, reputation and the prestige attaching to Specsavers and its Shaded and Unshaded logo marks and to exploit without paying compensation the marketing efforts which Specsavers has made. I would therefore find infringement of the Shaded and Unshaded logo marks by the use of the Asda logo (in both its forms) as part of the composite advertising and promotional campaign.’
‘24. In my view, Arnold J, as he then was, in Och-Ziff was saying that the CJEU took the view that, in considering infringement of a registered trade mark, it was not appropriate to look so broadly at the context that use which was prima facie infringing was nonetheless to be regarded as non-infringing because other, separate, acts of the defendant had countered actual deception. An extreme example is where a defendant uses a well-known brand for counterfeit goods but nonetheless makes it very clear that the goods are in fact counterfeit so that no actual purchaser is confused. There may be no actual confusion as a result of the use of the sign but there is nonetheless trade mark infringement because the court must focus on the use of the sign in question not the other statements by the defendant as to the trade origin of the goods. 25. Accordingly, while it is right to take the context in which the given sign will be seen into account, I am not persuaded that it would be right to expand the view so broadly as to take account of the fact that a given sign only appears in this case after a different sign has been used. To that extent, each use of the signs must be examined separately in what might be described as its “local” context.’ ‘164. I have also considered, in accordance with the guidance in Specsavers, and generally whether there is anything about the context of presentation of the marks which negates that result. In my view there is not. It is also necessary for the court to be cautious in adopting an overly expansive approach to taking account of context in a trade mark claim. One purpose of registered trade mark protection (in which it is distinguished from passing off) is to provide an element of exclusivity in the use of a registered mark, regardless of the wider context in which it is used, so long as the conditions for protection are fulfilled.’
‘25. Second, it is a particular feature of this business that none of the major competitors of Specsavers has a logo which is remotely similar to the Shaded logo mark or the Wordless logo mark. The judge had before him in the evidence of Mr Richard Holmes the marketing director of Specsavers Optical Group, the third claimant, reproductions of the logos of Boots Opticians, Optical Express, Dollond and Aitchison and Vision Express, and each of them is quite different from the Shaded logo mark and the Wordless logo mark. This is not a case in which it can be said that Specsavers are seeking to secure for themselves a monopoly in a relatively banal or commonly used background. Indeed Dame Mary Perkins, one of the founders of Specsavers, explained in her evidence that she chose the Wordless logomark, comprising as it does overlapping elipses, precisely because she felt it was more abstract than either a pair of glasses or an image of two eyes, and so would be immediately recognisable by the public as denoting Specsavers.’ ii) In Jack Wills Ltd v House of Fraser (Stores) Ltd[2014] EWHC 110 , Jack Wills’ mark comprised the simplest version of the Jack Wills logo, which Arnold J. described as consisting of a silhouette of a pheasant with a top hat and cane. The Ds’ alleged infringement was ‘the Pigeon Logo’
‘87 Distinctiveness of the Trade Marks. Counsel for Jack Wills submitted that the Trade Marks were inherently very distinctive. Counsel for House of Fraser did not suggest that the Trade Marks were devoid of distinctive character. His primary submission was that the Trade Marks and the Pigeon Logo were distinctively different from each other. I shall consider that question below. In the alternative, he submitted that, if the differences between the Trade Marks and the Pigeon Logo did not suffice to enable the average consumer to distinguish between them, then it followed that the Trade Marks were insufficiently different from other bird logos to possess distinctive character. I do not accept this argument. Leaving aside the fact that it ignores the difference between the dates at which the validity of the Trade Marks and the issue of infringement fall to be assessed, the Pigeon Logo is closer to the Trade Marks than the Trade Marks are to any other bird logo of which there is evidence of use in the United Kingdom. Taking account of the other bird logos of which there is evidence of use, I consider that the Trade Marks have a substantial degree of inherent distinctive character. An important factor in the distinctive character of the Trade Marks is their anthropomorphic aspect, and in particular the fact that the bird is equipped with accessories associated with an English gentleman.’
‘In any event, without its being necessary to consider the consequences of the agreement for the parties, the fact remains that the agreement is irrelevant to the assessment of the likelihood of confusion in the present case.’
‘The Beverly Hills Polo Club brand was established in 1982. Inspired by both the elegance and glamour of Beverly Hills as well as the heritage the sport of polo, the Brand captures the excitement of this competitive sport along with membership in an exclusive social club.’
‘7. The key element of the BHPC Brand is the horse and rider logo. The horse and rider logo has been used consistently together with the words “Beverly Hills Polo Club” since the BHPC Brand was established and is used in relation to all activities under the BHPC Brand. As well as featuring on the goods, the logo and the words are also shown on swing tags, labels, packaging in BHPC [F/1/12/79] stores and concessions, and in all advertising materials. 8. A wide range of goods are sold under the BHPC Brand, including menswear, womenswear, childrenswear, footwear, perfume, watches, eyeglasses, bags and luggage, cosmetics and skin products ("BHPC Brand Goods").’
‘8. A wide range of goods are sold under the BHPC Brand, including menswear, womenswear, childrenswear, footwear, perfume, watches, eyeglasses, bags and luggage, cosmetics and skin products ("BHPC Brand Goods").’
‘19. As shown from these documents, on average, between the years 2007 and 2018 (inclusive) retail sales of BHPC Brand Goods within the EU were$17.9 mn per annum and within the UK$4.2 mn per annum.’
‘Sales of goods under the BHPC Brand in the UK and the EU date back to the early 1990s. Data available to the Claimants show that there have been consistently high levels of sales of BHPC Brand Goods in the UK and EU since at least 2006.’
‘The name Beverly Hills suggests luxury, elegance and comfort. The game of polo, known as the sport of kings, reinforces these aspirational characteristics with the added dimensions of both the challenge of competitive sport as well as individual physical strength. The company’s focus is on international expansion with a new lifestyle shop concept. The company’s performance as a consumer brand has been recognized by the international retail community in several major venues with its nomination as International Emerging Market Retailer of the Year 2015 as well as International Lifestyle Retailer.’
‘21. The Claimants and their licensees advertise and promote the BHPC Brand through many means, including retail stores, websites, social media, print and digital advertising campaigns, sponsorship and attending trade shows. The BHPC Brand has also enjoyed substantial media coverage and won industry awards. The Claimants’ disclosure contains documents that show those activities and so I do not duplicate the contents of those documents by setting out what they say in this witness statement.’
‘Without prejudice to POLO’s acceptance of the RCBPC New Mark under the terms of this Agreement, each party agrees to respect the trade marks and other intellectual property rights of the other including but not limited to trade dress, copyright, designs and get up rights and to use all reasonable endeavours to avoid consumer confusion in relation to their respective brands.’
‘It is an icon which promotes an image of glamour, confidence, strength, competitiveness. When you see that rider on the horse waving that mallet, playing a game that only the upper class plays, you get that feeling of strength and competition, even in the horses’ muscles that are articulated in the design, you see the flexing of the strength of that horse’s muscle, you feel more than any other, of the other two polo brands that exist, you feel the drama and the spirit of the strength of that animal and competitive spirit of the guy on that horse waving that mallet. That is an incredible, incredible image. Better than any equestrian image out there.’
‘Very small for our market, for our brand.’
‘Are consumers accustomed to horse and player marks?’ and submitted the answer was ‘No’
‘To the extent that the average consumer (with their imperfect recollection) recognises there is a difference between those words [sc. between ‘Beverly Hills’ and ‘Royal County of Berkshire’], and recognises that it might be important as an indicator of origin of the goods, they (or at least a significant proportion of them) will likely consider that they are seeing a sub-brand. Similarly, to the extent that difference in the presentation of the horse-and-player is noticed and recalled, that will be considered as an indicator of a sub-brand, or maybe more likely of a brand update / refreshing.’
‘49. First, a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the governance of the company—that is to say, by voting at board meetings. That, I think, is what policy requires if a proper recognition is to be given to the identity of the company as a separate legal person. Nor, as it seems to me, will it be right to hold a controlling shareholder liable as a joint tortfeasor if he does no more than exercise his power of control through the constitutional organs of the company—for example by voting at general meetings and by exercising the powers to appoint directors. Aldous L.J. suggested, in Standard Chartered Bank v. Pakistan National Shipping Corporation (No. 2)[2000] 1 Lloyd's Rep 218 , 235—in a passage to which I have referred—that there are good reasons to conclude that the carrying out of the duties of a director would never be sufficient to make a director liable. For my part, I would hesitate to use the word "never" in this field; but I would accept that, if all that a director is doing is carrying out the duties entrusted to him as such by the company under its constitution, the circumstances in which it would be right to hold him liable as a joint tortfeasor with the company would be rare indeed. That is not to say, of course, that he might not be liable for his own separate tort, as Aldous L.J. recognised at paragraphs 16 and 17 of his judgment in the Pakistan National Shipping case. 50. Second, there is no reason why a person who happens to be a director or controlling shareholder of a company should not be liable with the company as a joint tortfeasor if he is not exercising control though the constitutional organs of the company and the circumstances are such that he would be so liable if he were not a director or controlling shareholder. In other words, if, in relation to the wrongful acts which are the subject of complaint, the liability of the individual as a joint tortfeasor with the company arises from his participation or involvement in ways which go beyond the exercise of constitutional control, then there is no reason why the individual should escape liability because he could have procured those same acts through the exercise of constitutional control. As I have said, it seems to me that this is the point made by Aldous J (as he then was) in PGL Research Ltd v. Ardon International Ltd [1993] F.S.R. 197. 51. Third, the question whether the individual is liable with the company as a joint tortfeasor—at least in the field of intellectual property—is to be determined under principles identified in C.B.S. Songs Ltd v. Amstrad Consumer Electronics Plc[1988] AC 1013 and Unilever Plc v. Gillette (U.K.) Limited [1989] R.P.C. 583. In particular, liability as a joint tortfeasor may arise where, in the words of Lord Templeman in C.B.S. Songs v. Amstrad at page 1058E to which I have already referred, the individual "intends and procures and shares a common design that the infringement takes place". 52 Fourth, whether or not there is a separate tort of procuring an infringement of a statutory right, actionable at common law, an individual who does "intend, procure and share a common design" that the infringement should take place may be liable as a joint tortfeasor. As Mustill L.J. pointed out in Unilever v. Gillette, procurement may lead to a common design and so give rise to liability under both heads.’
‘49. Pulling things together, in my judgment MCA v Charly represents the law on this topic in England and Wales. The protection for a director identified in Chadwick LJ's first principle is not strictly confined merely to voting at a board meeting but it is a narrow protection limited to exercising control through the constitutional organs of the company, albeit that may be something which can be delegated. A director seeking to avail themselves of that principle of delegation in order to escape liability, will need to prove that that has taken place. In any event showing simply that the director has acted properly, in the sense of not acting in breach of their fiduciary duty, is no defence.’
‘96. Buxton LJ went on to say that the most important feature of the case was the very limited role that page 2 had played at trial. Although it was covered by rule 31.22(1)(a) because it had been referred to in passing in a witness statement, it was not necessary, or even relevant, for the interested spectator to have access to page 2. It was common ground that the information in page 2 was confidential to Pfizer. In those circumstances the Court of Appeal allowed the appeal and made a rule 31.22(2) order in respect of page 2. 97. It is worth noting that many of the subsequent cases concerning final 31.22(2) orders in the Patents Court have also concerned financial information of one kind or another, including the financial information of third parties: see in particular Unwired Planet International Ltd v Huawei Technologies Co Ltd[2017] EWHC 3083 (Pat) , [2018] Bus LR 896 and Interdigital Technology Corp v Lenovo Group Ltd[2023] EWHC 1577 (Pat) .’
‘111. Thus the present case is quite different from Lilly Icos. In that case there was no departure from the open justice principle because there was no need for such a departure. As Buxton LJ explained, it was appropriate for the court to make an order under rule 31.22(2) in respect of page 2 of the schedule precisely because it was not relevant to the issues argued at trial and therefore the making of the order did not detract from open justice. It is doubtful whether the information in page 2 was properly characterised as a trade secret, but that was not the decisive consideration. Even lower grade confidential information is entitled to protection where its publication is not necessary for open justice.’