IL-2023-000007 - [2025] EWHC 2863 (Ch)

The perception of identity between sign and mark must be assessed globally from the perspective of the average consumer (S.A. Société LTJ Diffusion v Sadas Vertbaudet SA (Case C-291/00) [2003] FSR 34 (“LTJ Diffusion”) at [52]),

A sign will be identical with the registered 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” (LTJ Diffusion at [54]). In Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] RPC 40 (“Reed v Reed”) at [29] Jacob LJ observed that the Advocate General’s opinion was helpful in that case in indicating the sort of difference which would be so minute as to leave the mark and sign ‘identical’ and that which would not:

“…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).”

This is borne out by WebSphere Trade Mark [2004] EWHC 529 (Ch) [2004] FSR 39 (“WebSphere”) in which the presence of a hyphen in the sign (Web-Sphere) was held by Lewison J (as he then was) to be an insignificant difference from the word mark WEBSPHERE, which would go unnoticed by the average consumer.

In the case of a word mark, both the visual and aural impression must be considered (Reed v Reed at [32] cited by Arnold LJ in Easygroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247 (“Easygroup”) at [49]).

There is no reason to suppose that the Court in LTJ Diffusion meant to soften the edges of “strict identity” very far, because even where a mark and a sign are not identical, the proprietor of the mark will be protected if there is likelihood of confusion (Reed v Reed at [27] and Easygroup at [49]).