‘(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.’
‘… in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character.’
‘ … the use of a composite mark beginning with the word “easy” with a second word or other indication relating to the goods or services or other characteristics offered under the mark [has] come to indicate to the average consumer … the goods and services of the Claimant, or those of or connected with a business operated or licensed by the Claimant, or otherwise the subject of some commercial arrangement involving a business operated or licensed by the Claimant, and none other.’
‘I do not accept easyGroup's pleaded claim that its use of a family of marks has come to indicate to the average UK consumer, by any date relevant in these proceedings, that the use of a mark comprising "easy" before or as a prefix to a word or words alluding to goods and services was a reference to goods and services associated with, approved, authorised or endorsed by easyGroup alone, and no other entity. That is an extreme proposition which is not remotely established on the evidence before the court.’
‘The average consumer for the purposes of an infringement claim must be a consumer of the relevant goods and/or services who is both (i) familiar with the trade mark and (ii) exposed to, and likely to rely upon, the sign. In the present case, because SKY is accepted to be a household name at least in relation to television broadcasting, telephony and broadband provision, it can be safely assumed that all the potentially relevant consumers are familiar with it. Accordingly, attention can be focussed upon those who are exposed to, and likely to rely upon, the sign SkyKick.’
‘[34] As with all issues in trade mark law, the answer to disputed questions is normally provided by considering the purpose of a trade mark which, broadly speaking, is to operate as a guarantee of origin to those who purchase or use the product. In principle, therefore, and in the absence of any authority cited to us which is directly in point, I would consider that the term average consumer includes any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods.’
‘[29] The average consumer includes “any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods”: London Taxi Corpn Ltd v Frazer-Nash Research Ltd[2018] FSR 7 , para 34, per Floyd LJ.’
‘[38] The manner in which the requirement of a likelihood of confusion in article 9(2)(b) of Regulation 2017/1001 and article 10(2)(b) of Directive 2015/2436 (see paras 13–14 above), and the corresponding provisions concerning relative grounds of objection to registration in Directive 2015/2436 and Regulation 2017/1001, should be interpreted and applied has been considered by the CJEU 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 was set out by Arnold LJ in Match Group LLC v Muzmatch Ltd [2023] Bus LR 1097, para 27, as being: “(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.” [39] Having set out the standard summary of the principles in terms referable to the registration context, Arnold LJ went on to state, at para 28 that: “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.” [40] The context in which the sign has been used was considered by Kitchin LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd[2012] FSR 19 . Kitchin LJ, at para 87, stated: “In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.”’
‘The “easy” element of the [easyJet] mark, however, has no inherent distinctive character: it is a descriptive word, which indicates that the services are easy to use.’
‘(3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which — (a) is identical with or similar to the trade mark, (b) [no longer in force] 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.’
‘[22] … It cannot be denied that, in the context of a uniform interpretation of Community law, a knowledge threshold requirement emerges from a comparison of all the language versions of the Directive. [23] Such a requirement is also indicated by the general scheme and purpose of the Directive. In so far as art. 5(2) of the Directive, unlike art. 5(1), protects trademarks registered for non-similar products or services, its first condition implies a certain degree of knowledge of the earlier trade mark among the public. It is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trademark, may possibly make an association between the two trademarks, even when used for non-similar products or services, and that the earlier trade mark may consequently be damaged. [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 traders in a specific sector. [25] It cannot be inferred from either the letter or the spirit of art. 5(2) of the Directive that the trademark must be known by a given percentage of the public so defined. [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. [27] In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.’
‘[17] In that connection, as regards art.9(1)(c) of Regulation 40/94, the Court held that the concept of “reputation” assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by that trade mark (see judgment in PAGO International (C-301/07) EU:C:2009:611 at [21] and [24]).’
‘[34] The relevant public which must have some knowledge of the earlier trade mark is therefore that concerned by it. That must mean the part of the public that has had contact with or exposure to the goods or services on which the owner of the mark has used it. The extent of the public that must have some knowledge of the trade mark therefore depends on the product or service marketed by its owner. But not all of that sub-set of the public needs to have knowledge: it suffices that a significant part of the public concerned has knowledge. [35] The parties did not agree whether, as concerns Eagle Rare’s reputation, the relevant part of the UK public was: (1) that with contact with or exposure to the whisky market generally; or (2) that with contact with or exposure more specifically to the bourbon market; nor is this a point that has been expressly decided in any domestic or European authority that the parties’ lawyers could find. The claimants submitted the latter, on the basis that they had only marketed bourbon and so could only have established a reputation for a brand of bourbon. The defendants submitted the whisky market generally, on the basis that the first claimant’s UK trade mark is registered for the broader specification of “whisky”, not “bourbon”, as the EU trade mark is. They argued that an attempt to gain wider protection of the mark in the whisky market as a whole meant that a reputation had to be established across that wider market, if reputation was to be invoked, otherwise a claimant could obtain much wider extended protection for a mark on the basis of a broad specification but narrow use. [36] In my judgment the claimants are right on this issue, both in principle—where the alleged infringing use is in the narrower class of goods—and as a matter of interpretation of the ruling of the CJEU. Paragraph 24 of the judgment in General Motors v Yplon makes it clear that the extent of the reputation that needs to be established depends on the use of the trade mark on products or services actually marketed, and that it is only the part of the public concerned by the actual use of the mark that must have the relevant knowledge of it. The words of [26] (“the products or services covered by that trade mark”), though capable of being read as a reference to the specification of the trade mark, are not in context making that reference: [26] explains that only a significant part of the public concerned, as identified in [24], and not the whole of it, needs to have knowledge of the trade mark. It would be illogical for the owner of the mark to have to prove a reputation in a field in which the mark has not yet been fully deployed, or deployed at all, if all that they were seeking to do was restrain infringement in a narrower field in which the mark had been used. Were the owner of a mark seeking to restrain infringement under art.9(2)(c) that went beyond the scope of the use of the mark then a different conclusion might well be reached, on the basis that reputation on a wider basis needed to be proved to restrain a wider infringement.’
‘Although the threshold for reputation for the purposes of extended protection is not particularly high, it is far from a trivial one.’
‘[41] Whether the use of the sign gives rise to a link between the sign and the trade mark in the mind of the average consumer must be appreciated globally having regard to all the circumstances of the case: see Adidas-Salomon v Fitnessworld at [29]-[30], Adidas v Marca Mode at [42] andCase C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd [EU:C:2013:497], [2014] F.S.R. 4 ("Specsavers (CJEU)") at [120]. The fact that the sign would call the trade mark to mind for the average consumer, who is reasonably well informed and reasonably observant and circumspect, is tantamount to the existence of such a link: seeCase C-252/07 Intel Corp Inc v CPM United KingdomLtd [2008] E.C.R. I-8823 at [60] and Specsavers (CJEU) at [121].’
‘[40] As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.’
‘[76] … detriment to the distinctive character of the earlier mark is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. [77] It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.’
‘[34] According to the Court’s case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (Intel Corp , paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment). … [36] The wording of the above case-law is explicit. It follows that, without adducing evidence that the condition is met, the detriment or the risk of detriment to the distinctive character of the earlier mark …cannot be established. [37] The concept of “change in the economic behaviour of the average consumer” lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009, in as much as that similarity does not cause any confusion in their minds. … [42] Admittedly, Regulation 207/2009 and the Court’s case-law do not require evidence to be adduced of actual detriment, but also admits the serious risk of such detriment, allowing the use of logical deductions. [43] None the less, such deductions must not be the result of mere suppositions but … must be founded on “an analysis of the probabilities and by taking into account of the normal practice in the relevant commercial sector as well as all other circumstances of the case.’
‘[118] Here the Court of Justice has explained that a serious risk of detriment may be established by deduction, but any such deduction cannot be supposition and must instead be founded properly on all the circumstances of the case and the nature of the trade in issue.’
‘… the use of the [Easyfeet and Easyfeetstore] will limit the ability of the Claimant to license the easy Brand. Such use therefore causes detriment to the reputation thereof.’
‘[41] As regards the concept of “taking unfair advantage of the distinctive character or the repute of the trade mark”, also referred to as “parasitism” or “free-riding”, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.’
‘[49] … where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.’
‘[106] Ignoring issues which do not arise in the present case, such as use in relation to spare parts or second-hand goods and use in relation to a sub-category of goods or services, the principles may be summarised as follows: (1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark ... (2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark … (3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin … (4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use … (5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark … (6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark … (7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services … (8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use … [107] The trade mark proprietor bears the burden of proving genuine use of its trade mark … The General Court of the European Union has repeatedly held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned…’