“1(1) In this Act “trade mark” means any sign which is capable— (a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and (b) of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging… 2(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act. (2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off. 3(1) The following shall not be registered— (a) signs which do not satisfy the requirements of section 1(1), (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in bona fide and established practices of the trade… 9(1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent. The acts amounting to infringement, if done without the consent of the proprietor, are specified in subsections (1) to (3) of section 10. 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 is (a) identical with or similar to the trade mark, (b)…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. (3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered…. (4) For the purposes of this section a person uses a sign if, in particular he- (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) imports or exports goods under the sign; (ca) uses the sign as a trade or company name or part of a trade or company name; (d) uses the sign on business papers and in advertising; or (e) uses the sign in comparative advertising in a manner..contrary to the Business Protection fromMisleading Marketing Regulations 2008 …. 11(2) A registered trade mark is not infringed by…(b) the use of signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services….provided the use is in accordance with honest practices in industrial or commercial matters. 14(1) An infringement of a registered trade mark is actionable by the proprietor of the trade mark. (2) In an action for infringement all such relief by way of damages, injunctions, accounts or otherwise is available to him as is available in respect of the infringement of any other property right… 46(1) The registration of a trade mark may be revoked on any of the following grounds—(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use… 47(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.”
“5(2)…the principle of the supremacy of EU law continues to apply on or after IP completion day so far as relevant to the interpretation, disapplication or quashing of any enactment or rule of law passed or made before IP completion day….. 6(3) Any question as to the validity, meaning or effect of any retained EU law is to be decided, so far as that law is unmodified on or after IP completion day and so far as they are relevant to it (a) in accordance with any retained case law and any retained general principles of EU law, and (b) having regard (among other things) to the limits, immediately before IP completion day, of EU competences.”
“5(1) The principle of the supremacy of EU Law does not apply to any enactment or rule of law…made on or after IP Completion Day 5(3) Subsection (1) does not prevent the principle of the supremacy of EU law from applying to a modification made on or after IP Completion Day of any enactment or rule of law passed or made before IP completion dayif the application of the principle is consistent with the intention of the modification. “6(6) Subs [6](3) does not prevent the validity, meaning or effect of any retained EU law that has been modified on or after IP Completion Day from being decided as provided for in that subsection if doing so is consistent with the intention of the modifications.”
“Submissions and argument advanced to us during the appeal proceeded very much as it would have done in 2019, when the UK was a member of the EU, or even in 2020 when the transitional period…was still in force... However, the hearing took place in February 2021 when the transitional period had expired. As at this point in time a new set of legal arrangements are in place which governed the relationship of the UK to EU law. The court cannot therefore assume that the old ways of looking at EU derived law still hold good. We must apply the new approach. There is much that is familiar but there are also significant differences…… In this case, the task of the court has been relatively straightforward since as of the date of this judgment the new legal regime has been in place for only a few months and nothing of relevance in the case law of the CJEU has changed. As time moves on, and the case law of the CJEU evolves, then the differences between the current state of EU law and that which the court is to take account of might become more accentuated. At that stage the analysis might become more complex.”
“We never saw the adverts. My interpretation of the Google advert was purely that our name would come at the top of the list. We didn’t really actually appreciate it was an advert in any sense of the word. I understood it to be a way to bring your name to the top of the list for certain terms….I think it’s semantics maybe here, so if I can maybe clarify what I’m saying. We obviously provided a list of key phrases …to be used in the pay per click campaign andmy understanding is those phrases would come up in the advert. That’s what I approved. So, payroll for accountants, outsourcing for accountants and, you know, there’s a long list, but those are the things that I understood. I understood that was the advert. Purely a text advert.”
‘Financial Services; outsourcing [of them] by financial services professionals, financial services provided on-line’
“Mr Zweck: When you selected the handful of companies that you were going to use keywords for their trade names, was that selection done on the basis they were the main players in the market ? Mr Husain: I think they were just names that I was familiar with. So they were names of firms that I’d bumped into. As you know, we’re part of a wider group. We have our own chartered accountancy practice in the UK, two firms in fact and we get approached all the time by other outsourcers, so these names pop up in my inbox all the time. So it just means they’re familiar to me. Whether they are good or not good, you know, I can’t really hazard a guess. Mr Zweck: They’re just the names that were known to you in the market? Mr Husain: Exactly.”
“A user of the Google search engine who has carried out a search is presented with a search engine results page or SERP which usually contains three elements. The first is the search box which contains the search term, a word or phrase typed in by the user. The second contains links to websites which appear to the Google search engine to correspond to the search term. These are known as the ‘natural’ or ‘organic’ results of the search and are usually displayed in order of relevance. The third comprises links, referred to as ‘sponsored links’, to websites which are displayed because the operators of those websites have paid for them to appear. They are, in effect, advertisements and are usually displayed in one or more parts of the SERP, namely in a shaded box in the upper part of the page (above the natural search results), in a panel on the right-hand side of the page (to the right of the natural search results), or in a panel at the bottom of the page (under the natural search results). Over the years the labelling of these sponsored links has varied, but they have generally been headed with the words ‘Sponsored links’ or ‘Ads’ or variations of them. A sponsored link appears when a user enters one or more particular words into the search engine through the search box. These words, known as ‘keywords’, are secured by the advertiser in return for a fee. This is called ‘purchasing’ or ‘bidding on’ the keyword. The sponsored link contains three elements. The first is an underlined heading which functions as a hyper-link to the advertiser’s website. This may or may not contain the keyword. The second is a short commercial message or advertisement which, once again, may or may not contain the keyword. The third is the uniform resource locator or URL of the advertiser’s website. The fee paid by the advertiser is calculated on the basis of the number of times users click on the hyper-link to the advertiser’s website (a process known as ‘click through’) subject to a maximum daily limit which the advertiser has specified. A number of different advertisers may bid for the same keywords, and, if they do, the order in which their adverts are displayed will depend on various factors including the maximum daily sum, often referred to as the ‘maximum price per click’, that each is prepared to pay… …The search term entered by a user of the Google search engine and the keyword selected by the advertiser do not have to be identical for the sponsored link to appear on the SERP….[A]dvertisers have the ability to choose different match types in relation to each keyword, and these match types govern the circumstances in which the sponsored links associated with those keywords will appear. For example, ‘exact match’ requires the search term to be identical to the keyword; ‘phrase match’ requires the search term to contain the same words as the keyword in the same order, but it may include additional words before or after the keyword; and ‘broad match’ simply requires the search term to correspond to variations of the keyword, such as plurals. By 2008 Google had also introduced a development of broad matching known as ‘advanced broad matching’ which causes the sponsored link to appear if the Google search engine deems the keyword relevant to the search term. So, by way of illustration, a search for the term ‘flowers’ might be deemed to match the keyword ‘florists’. There is another feature….introduced by Google to allow advertisers to limit the appearance of their adverts in response to search terms which were merely related to their keywords. This feature, called ‘negative matching’, allows advertisers to specify search terms in response to which their advertisements will not appear. Until May 2008 Google operated a policy in relation to AdWords whereby a trade mark owner could notify Google that it had registered a particular word as a trade mark. Once notified, Google would not allow that word to be purchased by another trader as a keyword. However….Google changed its policy for the United Kingdom and from that time permitted other traders to purchase words registered as trade marks as keywords, including for use in relation to goods or services for which those trade marks were registered. This means that rival traders can use keywords such as ‘interflora’ [so] when a user enters the word ‘interflora’ into the search engine, the advertisements displayed on the SERP include the advertisements of those rivals for goods and services covered by that trade mark. Two further points should, however, be noted. First, Google does allow trade mark owners to block the use of trade marks in advertisements appearing on the SERP. Second, prior to 2008 it was perfectly permissible for rival traders such as M & S to purchase a generic term such as ‘flowers’…[so the search] ‘interflora flowers’ would see on the SERP not just natural search results for Interflora but also advertisements for the goods and services of those rival traders.”
“We obviously provided a list of key phrases …to be used in the pay per click campaign andmy understanding is those phrases would come up in the advert. That’s what I approved. So payroll for accountants, outsourcing for accountants and, you know, there’s a long list, but those are the things that I understood. I understood that was the advert. Purely a text advert.”
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“The idea came about because, you know, as you’ve probably experienced yourself, you Google ‘Mercedes’ and BMW might come up. If you Google ‘BMW’, Mercedes might come up. That was where, if you like, the idea was born and that was what was checked with Jo Edwards, and so we really didn’t understand there to be any issue whatsoever with this.”
“The problem here seems to be the ad was not set up correctly. What was requested is that when searching for [QX], advancetrack etc, our firm should appear in the search results. However, what is happening is that the ad is showing the names of our competitor firms with our web address. Clearly the ad has been set up incorrectly as other businesses do this, as demonstrated, and do not show the competitor’s name in the ad….”
“We need to get to the bottom of how the companies’ trademarks and names were used in these Google Adword campaigns. This is not what was instructed i.e. competitors’ names were to be used as key words in campaigns not within adverts. Can you please investigate internally and with Google.”
“First, [the claimant] must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services….” (my underline) I have underlined ‘the purchasing public’ because the issue for Passing Off must in this context mean that part of the public who may purchase the product – in this context, accountancy firms, not the public generally. I note that Lloyd LJ in Lumos Skincare v Sweet Squared[2013] EWCA Civ 590 said at paras 40-41: “At the most basic level, the point of the use of a mark by way of trade is to distinguish products by reference to their trade origin from others whose source is different. Initially, at least, it is not the mark that carries the goodwill or reputation, but the products. If customers are pleased with them, they will buy them again, and they may be more inclined to buy other goods sold under the same mark. Only if a mark is very well established or well promoted isit likely to attract buyers by itself….As Lord Oliver said [in Reckett]…relevant goodwill is attached to the goods supplied by the claimant in the mind of the purchasing public by association with the mark.”
“As to what amounts to a sufficient business to amount to goodwill, it seems clear that mere reputation is not enough…The claimant must show it has a significant goodwill, in the form of customers, in the jurisdiction…as opposed to people in jurisdiction who happen to be customers elsewhere.”
“24. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example trader in a specific sector…. 26. 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 or services covered by that trade mark…”
“(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… (2) For the purposes of subsection (1) use of a trade mark includes use in a form (‘the variant form’) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)….”
‘advancetrack’, ‘Advancetrack’ and ‘AdvanceTrack’ are all ‘variant forms’ of the Claimant’s trade mark ‘ADVANCE TRACK’
“The first question is what sign was presented as the trade mark on the goods and in the marketing materials during the relevant period…..The second question is whether that sign differs from the registered trade mark in elements which do not alter the latter’s distinctive character….(a) what is the distinctive character of the registered trade mark, (b) what are the differences between the mark used and the registered trade mark and (c) do the differences identified in (b) alter the distinctive character…in (a) ?”
‘Financial Services; outsourcing [of them] by financial services professionals, financial services provided on-line’
“The court must identify the goods or services in relation to which the mark has been used in the relevant period and consider how the average consumer would fairly describe them. In carrying out that exercise the court must have regard to the categories of goods or services for which the mark is registered and the extent to which those categories are described in general terms. If those categories are described in terms which are sufficiently broad so as to allow the identification within them of various sub-categories which are capable of being viewed independently then proof of use in relation to only one or more of those sub-categories will not constitute use of the mark in relation to all the other sub-categories….[T]he purpose of the provision is to ensure that protection is only afforded to marks which have actually been used or, put another way, that marks are actually used for the goods or services for which they are registered.”
“10.1.The registration of a trade mark shall confer on the proprietor exclusive rights therein. 10.2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trade mark, the proprietor of that registered trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a) the sign is identical with the trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered; (b) the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) the sign is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 10.3. The following, in particular, may be prohibited under paragraph 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services.. (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or part of [one]; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.” (a) the sign is identical with the trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered; (b) the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) the sign is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. (b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services.. (c) importing or exporting the goods under the sign; (d) using the sign as a trade or company name or part of [one]; (e) using the sign on business papers and in advertising; (f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.”
“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 is (a) identical with or similar to the trade mark, (b)…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. (3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered…. (4) For the purposes of this section a person uses a sign if, in particular he (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes…or offers or supplies services under the sign; (c) imports or exports goods under the sign; (ca) uses the sign as a trade or company name or part of [one]; (d) uses the sign on business papers and in advertising; or (e) uses the sign in comparative advertising in a manner..contrary to the Business Protection fromMisleading Marketing Regulations 2008 ….”
“142 [On ‘banners’] the question would appear to turn on whether the use of the word ‘Reed’ by Yahoo at the instance of RBI properly amounted to a ‘use in the course of trade’. It may be that an invisible use of this sort is not use at all for the purposes of this trade mark legislation - there is no meaning being conveyed to anyone—no ‘sign’…. 149 [On ‘metatags’] there are several difficult questions: (a) First, does metatag use count as use of a trade mark at all? In this context it must be remembered that use is important not only for infringement but also for saving a mark from non-use. In the latter context it would at least be odd that a wholly invisible use could defeat a non-use attack. (b) If metatag use does count as use, is there infringement if the marks and goods or services are identical ? This is important: one way of competing with another is to use his trade mark in your metatag—so that a search for him will also produce you in the search results. Some might think this unfair—but others that this is good competition provided that no-one is misled. (c) If metatag use can fall within the infringement provisions of Art.5, can the defences under Art.6.1(a) apply, for instance the own name defence ?”
“[T]he expression ‘using’ [cited in various languages].. involves active behaviour and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against his express will. Article 5(3), which lists in a non-exhaustive manner the types of use which the trade mark proprietor may prohibit refers exclusively to active behaviour on the part of the third party…Article 5(1) is intended to provide the proprietor with a legal instrument allowing him to prohibit, and to prevent, any use of his trade mark by a third party without his consent. However, only a third party who has direct or indirect control of the act constituting the use is effectively able to stop that use and..comply with that prohibition.”
“…It is for the referring court to examine whether it follows from the conduct of mk advokaten, in the context of either a direct or indirect relationship between [it] and the operators of the websites…that [they] placed the advertisement online by its order and on its behalf.”
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“56 The use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs…. 68…[I]n most cases an internet user entering the name of a trade mark as a search term is looking for information or offers on the goods or services covered by [it]. Accordingly, when advertising links to sites offering goods or services of competitors of [its] proprietor are displayed beside or above the natural results of the search, the internet user may, if he does not …disregard those links as being irrelevant and does not confuse them with those of the proprietor of the mark, perceive those advertising links as offering an alternative to the goods or services of the trade mark proprietor. 69 [Where] a sign identical with a trade mark is selected as a keyword by a competitor of the proprietor of the mark with the aim of offering internet users an alternative to the goods or services of that proprietor, there is a use of that sign in relation to the goods or services of that competitor.”
“…[I]n the case of [double] identity…[the aim] of protection is in particular to guarantee the trade mark as an indication of origin….[T]he exclusive right under article 5(1)(a) of the Directive was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods.”
“…[T]he proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered...where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.”
“83. The question whether that function of the trade mark is adversely affected when Internet users are shown, on the basis of a keyword identical with a mark, a third party’s ad, such as that of a competitor of the proprietor of [it], depends in particular on the manner in which that ad is presented. 84. The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party…. 85. In such a situation, which is….characterised by the fact that the ad in question appears immediately after entry of the trade mark as a search term by the Internet user concerned and is displayed at a point when the trade mark is, in its capacity as a search term, also displayed on the screen, the Internet user may err as to the origin of the goods or services in question. In those circumstances, the use by the third party of the sign identical with the mark as a keyword triggering the display of that ad is liable to create the impression that there is a material link in the course of trade between the goods or services in question and the proprietor of the trade mark… 86. Still with regard to adverse effect on the function of indicating origin, it is worthwhile noting that the need for transparency in the display of advertisements on the Internet is emphasised in the EU legislation on electronic commerce. Having regard to the interests of fair trading and consumer protection, referred to in recital 29 in the Preamble to Directive 2000/31, article 6 of that Directive lays down the rule that the natural or legal person on whose behalf a commercial communication which is part of an information society service is made must be clearly identifiable. 87. Although it thus proves to be the case that advertisers on the Internet can, as appropriate, be made liable under rules governing other areas of law, such as the rules on unfair competition, the fact none the less remains that the allegedly unlawful use on the Internet of signs identical with, or similar to, trade marks lends itself to examination from the perspective of trade mark law. Having regard to the essential function of a trade mark, which, in the area of electronic commerce, consists in particular in enabling Internet users browsing the ads displayed in response to a search relating to a specific trade mark to distinguish the goods or services of the proprietor of that mark from those which have a different origin, that proprietor must be entitled to prohibit the display of third-party ads which Internet users may erroneously perceive as emanating from that proprietor. 88. It is for the national court to assess, on a case-by-case basis, whether the facts of the dispute before it indicate adverse effects, or a risk thereof, on the function of indicating origin as described at para 84 of this judgment.”
“75…First, the critical question to be answered in such a case is whether the advertisement does not enable normally informed and reasonably observant Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to in the advertisement originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. 76 Second, the trade mark proprietor is entitled to prevent…third party adverts…which such Internet users may erroneously perceive as emanating from that proprietor or which suggest that there is a material link in the course of trade between the goods or services in question and the proprietor. 77 Third, if the advertisement, though not suggesting an economic link, is vague as to the origin of the goods or services in question so that such Internet users are unable to determine, on the basis of the advertising link and the commercial message attaching to it, whether the advertiser is a third party or, on the contrary, is economically linked to the proprietor, then this will have an adverse effect on the origin function of the trade mark.”
“1 [Under Art 5(1) Trade Mark Directive and Art.9(1)(a) EU Trade Mark Regulation, Google keyword use] adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party. [It] does not adversely affect….the trade mark’s advertising function; [but does] adversely affect the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. 2 [Art.5(2) Trade Mark Directive and Art.9(1)(c) of the EU Trade Mark Regulation] must be interpreted as meaning that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment). Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term. By contrast, the proprietor of a trade mark with a reputation is not entitled to prevent, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without adversely affecting the functions of the trade mark with a reputation an alternative to the goods or services of the proprietor of that mark.”
“98 [The CJEU appreciates] that Internet advertising using keywords which are identical to trade marks is not an inherently objectionable practice. On the contrary, its aim is, in general, to offer to Internet users alternatives to the goods or services of trade mark proprietors and it is not the purpose of trade marks to protect their proprietors from fair competition…. 143…. But [the CJEU] has also acknowledged that there are features of such advertising which may lead the consumer to mistake the origin of the goods or services so advertised. It has noted too the importance of transparency in the display of advertisements on the Internet. In this context the court has therefore explained the trade mark proprietor must be entitled to prohibit third party advertisements displayed as a result of the use of the mark as a keyword if average Internet users may wrongly perceive that the goods or services so advertised originate from the trade mark proprietor, or which are so vague that such users cannot determine whether they do or not. This of course means that the third party advertiser using a trade mark as a keyword must take care to ensure that his advertisements do enable average Internet users to ascertain whether the goods or services originate from the trade mark proprietor or an unconnected third party. If he fails to do so, he may be found to have infringed the trade mark.”
“125…At the end of the day, the crucial question was whether the advertisements enabled the average consumer to tell that the flower delivery service so covered did not originate from Interflora. The judge suggested that confusion on the part of Internet users who are ill-informed or unobservant must be discounted. Of course it must. But this formulation runs the risk of setting the bar too low and we prefer to put it differently. It is only the effect of the advertisements on Internet users who are reasonably well-informed and reasonably observant that must be taken into account. 126 Considered in this way, we think it makes no difference whether the question is asked and answered from the perspective of the single hypothetical well-informed and reasonably observant Internet user or whether that hypothetical person provides the benchmark or threshold for …identifying the population of Internet users whose views are material…. 128. [T]he average consumer is a hypothetical person and so conceptually different from a ‘substantial proportion’ of the actual public; and second, that the average consumer test is not a statistical test. Neither of these points is remotely controversial. [That consumer is not a mathematical average but], as we have said, a notional person whose presumed expectations are to be taken into account by the national court in assessing the particular question it is called on to decide. 129 As we have seen, the average consumer does not stand alone for it is from the perspective of this person that the court must consider the particular issue it is called on to determine. In deciding a question of infringement of a trade mark, and determining whether a sign has affected or is liable to affect one of the functions of the mark in a claim under article 5(1)(a) of the Directive… whether there is a likelihood of confusion or association under article 5(1)(b)…or whether there is a link between the mark and the sign under article 5(2) the national court is required to make a qualitative assessment. It follows that it must make that assessment from the perspective of the average consumer and in accordance with the guidance given by the Court of Justice. Of course, the court must ultimately give a binary answer to the question before it, that is to say, in the case of article 5(1)(b) of the Directive, whether or not, as a result of the accused use, there exists a likelihood of confusion on the part of the public. But 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.”
‘a senior partner/director or finance director in an accountancy practice or senior executive looking to outsource accountancy functions’
“A sign is identical with [a] trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”
“27 As a matter of policy there is no reason to suppose that the Court meant to soften the edges of ‘strict identity’ very far. For even if a sign and mark are not ‘identical’ for the purposes of Art.5.1(a) if there is a likelihood of confusion it will be caught by Art.5.1(b)…. 29. The Advocate General’s opinion [in LTJ] is also helpful in indicating the sort of difference which would be so minute as to leave the mark and sign “identical” and that which would not. He said, at para.[50]: “I suggest that the reproduction of [the plaintiffs’] mark in the same distinctive script but without the dot under the initial ‘A’ might well have been perceived by the average consumer as identical to the original (the change being minute and wholly insignificant) whereas the use of a noticeably different script and/or the addition of another name might be seen as only similar (such changes, at least taken together, being substantial).” 30 This approach also makes sense if one considers the registered trade mark system as a whole. To be registrable a mark must have a “distinctive character” (see Art.3(1)(b)), a matter which depends partly on the nature of the mark itself and partly on whether it has in fact acquired such a character (see Art.3(3)). So the registration authorities…must have regard to the nature of the mark applied for. In the case of a device mark consisting of a word written out in some special way that will include its visual impact. It would make no sense if, once such a mark were registered, a visually different but identical word device mark were treated as identical…. 32 [If] an...accused sign….has some visual significance, one must take that into account in considering the question of identity. The visual impact may be slight, but it will count even if the marks are identical to the ear. You can only have “identity” if there is both aural and visual identity. 33 What is to be compared with the registered mark for the purposes of Art.5.1(a)? It is the defendant’s “sign”
“38 So is ‘Reed Business Information’ identical to ‘Reed’ ? I think not. ‘Reed’ is a common surname. The average consumer would recognise the additional words as serving to differentiate the defendant from Reeds in general - this one calls itself ‘Reed Business Information’ because it supplies information to businesses in some unspecified way or ways. 39 Putting it another way, I do not think the additional words ‘Business Information’ would ‘go unnoticed by the average consumer’. In all uses of the phrase complained of they are as prominent as the word ‘Reed’.”
“25…[T]he sign ‘Edi Koblmüller’, which reproduces only a small part of the BergSpechte trade mark, cannot be considered to be identical with that trade mark. A sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer (LTJ…) 26 It is, however, for the national court to assess whether the sign ‘Edi Koblmüller’ is similar to the BergSpechte trade mark. 27 With regard to the sign ‘Bergspechte’, it is not disputed that it does not reproduce all the elements constituting the trade mark either. It could, however, be regarded as containing differences so insignificant that they may go unnoticed by an average consumer..[That] is for the national court... 28 Should that court hold that the sign ‘Bergspechte’ is not identical with the trade mark ‘BergSpechte’, it would appear appropriate, subject to verification by the national court to hold that sign similar to the trade mark.”
“…[T]he proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered...where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.”
“Advancetrack Outsourcing – Payroll Outsourcing – UK Outsourcing.Outsource your compliance work to us, focus on more profitable work and reduce costs.”
‘Advancetrack – Outsourcing for Accountants’ with similar (but more detailed) descriptive text underneath. As noted above, in Reed at para 33, Jacob LJ stressed that the first stage was to identify the ‘sign’ being ‘used’ and he went on to say at paras 34-37: “34…[In BMW] v Deenik [1999] E.T.M.R. 339, the expressions complained of were “BMW specialist,” and “Repairs and maintenance of BMWs”. The Court proceeded on the basis that this was an Art.5(1)(a) case of identical marks and goods. It did not explicitly first identify the sign used by the defendant. But it was obvious what it was: just BMW. The other words in context were wholly devoid of any trade mark significance.… 35 In the present case it is accepted by [the Claimant] (rightly I think) that the defendants’ signs are the two logos, the composite words “Reed Elsevier” and the composite words “Reed Business Information” with or without the word “Ltd.”. It is each of those signs which must be compared with the mark consisting of the word “Reed” when considering…identity… 37 It was over ‘Reed Business Information’ that battle was joined. The composite is not the same as, for instance, use of the word ‘Reed’ in the sentence: ‘Get business information from Reed’
“27. The manner in which the requirement of a likelihood of confusion in… Article 10(2)(b) of [the Recast Directive]... and the corresponding provisions concerning relative grounds of objection to registration in the Directive and the Regulation, should be interpreted and applied has been considered by the Court of Justice of the European Union in a large number of decisions. In order to try to ensure consistency of decision making, a standard summary of the principles established by these authorities, expressed in terms referable to the registration context, has been adopted in this jurisdiction. The current version of this summary (see e.g. Sazerac Brands LLC v Liverpool Gin Distillery Ltd[2021] EWCA Civ 1207 , [2021] ETMR 5 at [8]) 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; and (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.” 28. 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: see Specsavers International Healthcare Ltdv Asda Stores Ltd[2012] FSR 19 at [45], [87] (Kitchin LJ, as he then was). 29. It is well established that there are two main kinds of confusion which trade mark law aims to protect a trade mark proprietor against. 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. I discussed the distinction between the two in Sazerac v Liverpool Gin at [10]-[14]. 30. The judge set out the applicable legal principles at [79]-[80]. He cited the earlier version of the standard summary set out in Specsavers v Asda at [52]. That will potentially have been to the Defendants’ advantage, because paragraph (k) of that version referred to there being a likelihood of confusion “if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings”, whereas the version set out above correctly reflects the jurisprudence of the CJEU that it is sufficient “if there is a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings”: see in particularCase C-39/97 Canon KK v Metro-Goldwyn Mayer Inc[1998] ECR I-5507 at [29]. This is a point repeatedly noted by Kitchin LJ in his later judgments in IPC Media Ltd v Media 10 Ltd[2014] EWCA Civ 1439 ,[2015] FSR 12 at [39], Maier v Asos plc[2015] EWCA Civ 220 , [2016] Bus LR 1063 at [76] and Comic Enterprises Ltd v Twentieth Century Fox Film Corp[2016] EWCA Civ 41 ,[2016] FSR 30 at [32]. In future, decision makers should be careful to use the correct version of the summary.”
‘Advancetrack’ and ‘Advancetrack Outsourcing’ in the context of their respective adverts and search appearance above (Specsavers): i) ‘Advancetrack’ was plainly ‘confusingly similar’ even in its context and even to an intelligent and alert viewer such as ‘the average accountant’ looking carefully for the right service for their business. Even calibrating their attention highly, points (a), (b) and (c) in particular emphasise ‘the average accountant’ is well-informed, circumspect and observant and has the chance to make some global comparison on presentation on the search results, although in those the Claimant’s mark also appeared without a space and they would normally perceive the sign as a whole. This would be an instance of ‘direct confusion’ explained in Muzmatch. ii) ‘Advancetrack Outsourcing’ was in my judgement also confusingly similar. I accept ‘Advance Track’ itself is not highly distinctive (so point (h) is not engaged) and does not include ‘outsourcing’ in the mark (which is plainly noticeable to ‘the average accountant’ on a global comparison (points (a), (b) and (c))) and that mere association, even with the Claimant’s reputation, is not enough (points (i) and (j)). However, outsourcing is the main and most-well established service of the Claimant and very similar to the Defendant’s service, so that similarity offsets that difference (point (h)) and this association creates a risk that the public might believe that the respective services come from the same or economically-linked undertakings (point k) so on that ground and on balance on global assessment (point (a)) there is likelihood of confusion. This would be an instance of ‘indirect confusion’ explained in Muzmatch iii) For good measure, under the same principle, the most confusing ‘sign’ in the Defendant’s various adverts: ‘Advancetrack – QX Outsourcing – Gioutsourcing’, in my judgement would also be ‘confusingly similar’ to ‘Advance Track’
“A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which is (a) identical with or similar to the trade mark, (b)…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.”
“The types of injury referred to..are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them…In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.”
“As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the…similar sign is used by the third party may be perceived by the public in such a way the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact...goods or services offered by the third party possess a characteristic or a quality liable to have a negative impact on the image of the mark.”
“Any question as to the validity, meaning or effect of any retained EU law is to be decided, so far as that law is unmodified on or after [31st December 2020 ] and so far as they are relevant to it— (a) in accordance with any retained case law and any retained general principles of EU law, and (b)having regard (among other things) to the limits, immediately before [31st December 2020 ] of EU competences.”
“29 The courts in conducting statutory interpretation are ‘seeking the meaning of the words which Parliament used’: Black-Clawson International Ltd v Papierwerke Waldhof-Aschaenburg AG[1975] AC 591 , 613 per Lord Reid. More recently, Lord Nicholls of Birkenhead stated: ‘Statutory interpretation is an exercise which requires the court to identify the meaning borne by the words in question in the particular context. (R v DEFRA, Ex p Spath Holme Ltd[2001] 2 AC 349 , 396.) Words and passages in a statute derive their meaning from their context. A phrase or passage must be read in the context of the section as a whole and in the wider context of a relevant group of sections. Other provisions in a statute and the statute as a whole may provide the relevant context. They are the words which Parliament has chosen to enact as an expression of the purpose of the legislation and are therefore the primary source by which meaning is ascertained. There is an important constitutional reason for having regard primarily to the statutory context as Lord Nicholls explained in Spath Holme, p 397: ‘Citizens, with the assistance of their advisers, are intended to be able to understand parliamentary enactments, so that they can regulate their conduct accordingly. They should be able to rely upon what they read in an Act of Parliament’. 30 External aids to interpretation therefore must play a secondary role. Explanatory Notes, prepared under the authority of Parliament, may cast light on the meaning of particular statutory provisions. Other sources, such as Law Commission reports, reports of Royal Commissions and advisory committees, and Government White Papers may disclose the background to a statute and assist the court to identify not only the mischief which it addresses but also the purpose of the legislation, thereby assisting a purposive interpretation of a particular statutory provision. The context disclosed by such materials is relevant to assist the court to ascertain the meaning of the statute, whether or not there is ambiguity and uncertainty, and indeed may reveal ambiguity or uncertainty: Bennion, Bailey and Norbury on Statutory Interpretation, 8th ed (2020), para 11.2. But none of these external aids displace the meanings conveyed by the words of a statute that, after consideration of that context, are clear and unambiguous and which do not produce absurdity. 31 Statutory interpretation involves an objective assessment of the meaning which a reasonable legislature as a body would be seeking to convey in using the statutory words which are being considered. Lord Nicholls, again in Spath Holme[2001] 2 AC 349 , 396, in an important passage stated: “The task of the court is often said to be to ascertain the intention of Parliament expressed in the language under consideration. This is correct and may be helpful, so long as it is remembered that the ‘intention of Parliament’ is an objective concept, not subjective. The phrase is a shorthand reference to the intention which the court reasonably imputes to Parliament in respect of the language used. It is not the subjective intention of the minister or other persons who promoted the legislation. Nor is it the subjective intention of the draftsman, or of individual members or even of a majority of individual members of either House . . .Thus, when courts say that such-and-such a meaning _cannot be what Parliament intended_, they are saying only that the words under consideration cannot reasonably be taken as used by Parliament with that meaning’.”
“As for the meaning and effect of the 2006 Regulations, I think it would be wrong to apply a literal approach to the words and phrases used in it, such as in the definitions of ‘public contract’ and ‘public service contract’. A purposive approach should be adopted. As Lord Diplock indicated in Kammins v Zenith[1971] AC 850 , 881, this means that regard must be had to the context in which the Regulations were made, to their subject matter and to their purpose….Having regard to the background of EU law against which the Regulations were made, the definitions in the Regulations can be taken to express the same idea as those in the Directive. Thus, something which amounts to a contract in domestic law can nevertheless be held, without doing undue violence to the words of the Regulations, not to be a relevant contract for the purpose of the [Regulations].”
“(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 is (a) identical with or similar to the trade mark, (b)…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. (3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered…. (4) For the purposes of this section a person uses a sign if, in particular he (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes…or offers or supplies services under the sign; (c) imports or exports goods under the sign; (ca) uses the sign as a trade or company name or part of [one]; (d) uses the sign on business papers and in advertising; or (e) uses the sign in comparative advertising in a manner..contrary to the Business Protection fromMisleading Marketing Regulations 2008 ….”
“These Regulations amend the [TMA]… The majority of the amendments implement those provisions of the [Recast] Directive which had not already been implemented into UK law pursuant to the former Directive..”
“….Internet advertising using keywords which are identical to trade marks is not an inherently objectionable practice. On the contrary, its aim is, in general, to offer to Internet users alternatives to the goods or services of trade mark proprietors and it is not the purpose of trade marks to protect their proprietors from fair competition….”
“First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers..damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”
“It is not a defence to passing-off that many of a defendant's sales do not cause deception or confusion. There is passing-off even if most of the people are not fooled most of the time but enough are for enough of the time. By ‘enough’ I mean a substantial number of the plaintiff's customers or potential customers deceived for there to be a real effect on the plaintiff's trade or goodwill.”
“[The average consumer’ in trade mark infringement] is conceptually different from the ‘substantial proportion of the public’ test in passing off. 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 whether there is likely to be significant consumer confusion…”
“16…Sometimes a distinction is drawn between ‘mere confusion’ which is not enough, and ‘deception’ which is. I described the difference as ‘elusive’ in Reed at para 111: “Once the position strays into misleading a substantial number of people (going from ‘I wonder if there is a connection’ to ‘I assume there is a connection’) there will be passing off, whether the use is as a business name or a trade mark on goods.” 17. This is a question of degree—there will be some mere wonderers and some assumers—there will normally be passing off if there is a substantial number of the latter even if there is also a substantial number of the former.. 19….Clearly, if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too. A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant's goodwill or divert trade from him. I emphasise the word ‘really’”
“A….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 (CA) 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 or is wrongly connected with that business.”
“[Although] the Defendant gained nothing from its disastrous Google Ad Words campaign, indeed probably lost a good deal of trade, that does not mean the Claimant lost nothing. I infer on the balance of probabilities the Defendant’s conduct had a limited impact on the Claimant’s sales, but it may be very difficult to quantify. As discussed in argument, it is not a ‘Zero Sum Game’. There are several players in the market, not least QX and others. Not all of them were equally affected by the Defendant’s clumsy ad campaign. Mr Sheth’s consultants calculate the number of clicks on the Claimant’s website in Spring 2021 grew from 537 in March to 769 in April but then dropped to 482 in May, picking up again to 542 in June. It precisely correlates with the Defendant’s ‘Ad Text’ containing Advancetrack’ from late April to late May. So, whilst the Defendant gained nothing…I find on the balance of probabilities some customers looking for the Claimant were diverted away from it, albeit not to the Defendant but rather to competitors who were not ‘tarnished’ by its campaign as the Claimant was.”
“162 Prior to the CPR the position where a trade mark or passing off claim succeeded at trial was that the successful claimant would be entitled to an inquiry as to damages unless the court was satisfied it would be fruitless, McDonald’s v Burger King [1987] F.S.R. 112. If the court was in doubt, the inquiry should be ordered, though at the claimant’s risk as to costs. 163 Mr Howe submitted that the CPR enabled the court to take a more adventurous course—in a case where the damages were small it should boldly apply the overriding objective and assess them summarily. 164 I…do not accept…summary assessment…means the court should just pluck some small sum out of the air…However, I do think the court, where it thinks the damages are likely to be negligible or small, can use its case management powers to stop things getting out of hand. It can, for instance, require the claimant to put in a statement of case together with supporting evidence before requiring the defendant to do anything. The cost in money and time of that is likely to cause a claimant who in reality has little to gain to think twice. Again, the court can order the trial of quantum to be on paper only unless a case for cross-examination is made out. Disclosure can be restricted or even done away with. A time limit for the hearing can be imposed. All these things are ways of case-managing the problem.”
“97 In intellectual property cases it is conventional for the claimant to claim an inquiry as to damages or account of profits, not damages or profits. The procedural consequence of this is the trial will be split: liability will be determined first and quantum second. Although the court has power to order a joint trial of liability and quantum, there is very rarely done outside the Intellectual Property Enterprise Court Small Claims Track. Usually, if the claimant is successful, an inquiry or account will be ordered without argument at the claimant’s election and at the claimant’s risk as to costs. 98 In some cases…the defendant contends that, even though the claimant has succeeded on liability, no inquiry or account should be ordered either because the claimant has no real prospect of successfully claiming any financial relief beyond nominal damages or because the costs of an inquiry or account would be disproportionate to the claimant’s likely recovery. 99 Faced with such a contention, the court must first decide whether the claimant has a real (as opposed to fanciful) prospect of successfully claiming any financial relief (McDonald’s at 118-119… and Reed at 162). If the claimant has not adduced any evidence on this question (e.g. because it has obtained summary judgment on liability), it may be appropriate to give the claimant an opportunity to file such evidence… 100 If the claimant has no real prospect of successfully claiming financial relief, it should be confined to nominal damages. If the claimant has a real prospect of success, the court should consider whether the costs of an inquiry or account would be proportionate to the claimant’s likely recovery. Unless the court concludes that the costs would be disproportionate, it should order an inquiry or account. If the court considers that a full-blown inquiry or account would be disproportionate, it may adopt one of two courses. The first, if there is adequate material already before the court to enable it to do so, is immediately to assess the damages or profits summarily…The second course, if there is insufficient material which would enable the court immediately to assess the damages or profits summarily, so that it would be reduced to plucking a figure out of the air, is for the court to exercise its case management powers to determine damages or profits in a proportionate manner by a summary or streamlined process: see Reed at para.164.”
“(1) Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of infringement. (2) When awarding such damages—(a) all appropriate aspects shall be taken into account, including in particular— (i) the negative economic consequences, including any lost profits, which the claimant has suffered… and (ii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or (b) where appropriate, they may be awarded on the basis of the royalties or fees which would have been due had the defendant obtained a licence.”