Case No. IP-2014-000051

v Marks & Spencer [2014] EWCA Civ 1403, [2015] FSR 10 as follows:[68]. A proprietor of a registered trade mark alleging infringement under art.5(1)(b) of the Directive (art.9(1)(b) of the Regulation) must also satisfy six conditions, namely (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion. 102.The Court of Appeal in Interflora v Marks & Spencer went on to explain that the correct approach to the assessment of the likelihood of confusion was that endorsed by it at paragraphs 51 and 52 of Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [2012] F.S.R. 19, as follows;[51] The general approach to be adopted in assessing the requirement of a likelihood of confusion under the Regulation and Directive has been considered in a number of important decisions of the Court of Justice…[52] On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the determination of many of the disputes coming before it:(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.103.The most recent Court of Appeal authority on likelihood of confusion is Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41. At paragraph 30 the court stated: “[30] The similarity of the goods or services is central to the issue of infringement under art.5 (1)(b) and comes in at two points in the analysis. As this court explained in Maier v Asos plc [2015] EWCA Civ 220; [2015] F.S.R. 20 at [73], it raises first of all a threshold question. If the goods or services are not similar then there can be no infringement.”104.The Court of Appeal again endorsed the Specsavers approach to the assessment of the likelihood of confusion in paragraph 31, but added in paragraphs 32, 33 and 34:[32] In Maier we explained (at [76]) that to this summary should be added the further guidance provided by the Court of Justice in Canon (at [29]) that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion for the purposes of the provision. [33] The decision in Specsavers clarified one further important point concerning the context of the accused use. As this court said at [87]: “… 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.”[34] All of this guidance makes clear that the matter must be assessed from the perspective of the average consumer. This court considered the characteristics of the average consumer at some length in [Interflora v Marks & Spencer]. The following general points emerge further to those set out above: (i) the average consumer is a hypothetical person or, as he has been called, a legal construct; he is a person who has been created to strike the right balance between the various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply;(ii) the average consumer is not a statistical test; the national court must exercise its own judgment in accordance with the principle of proportionality and the principles explained by the Court of Justice to determine the perceptions of the average consumer in any given case in the light of all the circumstances; the test provides the court with a perspective from which to assess the particular question it has to decide; (iii) in a case involving ordinary goods and services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world. A judge may nevertheless decide that it is necessary to have recourse to an expert’s opinion or a survey for the purpose of assisting the court to come to a conclusion as to whether there is a likelihood of deception;(iv) the issue of a trade mark’s distinctiveness is intimately tied to the scope of the protection to which it is entitled. So, in assessing an allegation of infringement under Article 5(1)(b) of the Directive arising from the use of a similar sign, the court must take into account the distinctiveness of the trade mark, and there will be a greater likelihood of confusion where the trade mark has a highly distinctive character either per se or as a result of the use which has been made of it. It follows that the court must necessarily have regard to the impact of the accused sign on the proportion of consumers to whom the trade mark is particularly distinctive;(v) if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court, then it may properly find infringement.”105.In this case, there is no dispute in relation to Interflora conditions (i), (ii) and (v). It is common ground that Oranmore has used the ORANMORE Signs and First Defendant’s Device in the UK, in the course of trade, in relation to goods or services which are identical to those for which the Registered Mark is registered. The dispute relates to Interflora conditions (iii), (iv) and (vi). Accordingly, it is for Oran to establish that one or more of the ORANMORE Signs with or without the First Defendant’s Device are similar to the Registered Mark, and that because of such similarity and the identity or similarity of the goods and/or services for which the Registered Mark and those in relation to which the ORANMORE Sign had been used, there existed a likelihood of confusion in the mind of the average consumer of the goods and services in question. However, having alleged that Oran has consented to the disputed use, it is for Oranmore to prove that it has such consent, not for Oran to prove the absence of it (per Lewison LJ in