Case No. IP-2014-000051

Law 100.Section 10(2) of the 1994 Act provides “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 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.”101.The Court of Appeal summarised the six requirements for infringement under section 10(2) of the 1994 Act at paragraph 68 of Interflora 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 Honda Motor Co Ltd v Neesam [2006] EWHC 1051 at paragraph 5). Issues 3 and 4 - Is there similarity between Oranmore Signs and the Registered Mark such that, when used with identical goods and services, there is a likelihood of confusion? The average consumer - submissions 106.The goods the subject of dispute in this case are preformed concrete building elements, as previously described, and the services complained of are the design of such elements and the provision of construction management services and services relating to the design of buildings to such customers. That is apparent from the particulars of claim.107.Mr Harbottle for the Defendants submits that the average consumer in relation to those goods and services is a specialist in the building trade who is purchasing for mainly large, scale, commercial or institutional building projects, rather than individual domestic ones; that such a consumer often purchases following the invitation of tenders; that he may require potential suppliers to be on a list of approved suppliers, or to pre-qualify by the provision of insurance and financial details and risk assessments before they can tender as part of a due diligence process; that he frequently purchases large quantities of materials in high-value contracts. The Defendants rely on the oral evidence of Oran’s witness, Christina Lines, who agreed in cross examination with these principles. She additionally stated that such purchasing decisions on large scale projects with a main contractor were often made by a supply chain manager, and that such a role was generally occupied by persons with the relevant supply chain management professional qualification. Accordingly, Mr Harbottle for the Defendants submits that the average consumer is likely to be a sophisticated and knowledgeable individual who will pay a high degree of attention to the identity of the party from which it is purchasing and this renders confusion less likely.108.Conversely, Oran does not say that the average consumer in this case is anything other than an ordinary human being, whose reaction is the same as anyone else in this court. Mr Moody-Stuart submits that the terms Oran and Oranmore are so closely similar they are almost interchangeable, such that even when a person is trying very hard indeed not to get it wrong, they can nonetheless get the terms mixed up. He reminds me that Mr Harbottle mistakenly referred to Oran when he meant Oranmore in writing in his skeleton argument and orally in closing argument, as did one of the Defendants’ witnesses.109.Mr Moody-Stuart submits for Oran that the purchase processes described by Miss Lines, which the Defendants rely on as rendering confusion less likely, do not vitiate the likelihood of confusion, as the care and attention given by the consumer in such cases is not to do with who is supplying but their attributes – namely whether they are insured, whether they are on a list of approved suppliers etc. He submits that if such a consumer has already assumed a connection between Oran and Oranmore because of confusion between mark and sign, that is something which is already in his mind when the tenders are requested. 110.Mr Moody-Stuart reminds me that the guidance of Specsavers sub-paragraph 52(b) is that the average consumer “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”. He submits that because of this doctrine of imperfect recollection, the average consumer in this case is not more careful than an ordinary human being, including those in this courtroom, and is just as likely to be confused between the Registered Mark and the ORANMORE Signs, with or without the device, given the close similarity between the Registered Mark and ORANMORE Signs and the fact that they are used in relation to identical goods and services. The average consumer - conclusions 111.The average consumer in this case is a consumer of specialised pre-cast concrete building elements and design and consultancy services relating to design of those elements and building design. It is common ground that the relevant goods are high-value products. As well as his deemed features described in Specsavers sub-paragraphs 52(b) and 52(c), I find that he has a number of additional features to be considered:i)He is a construct from a spectrum of consumers with different roles and different purchasing responsibilities. Some will be employed within large main contractors responsible for building large-scale commercial and institutional projects for third party clients. Some will be employed within smaller contractors, building smaller-scale developments for third party clients. Some may be, or may be employed by, developers sourcing for their own builds. They may be professional supply chain managers, quantity surveyors, procurement managers, quantity surveyors, architects, building professionals or property developers. However the average consumer is one with professional experience in the building industry.ii)Although some consumers will only order from suppliers they have pre-approved or dealt with before, and some will carry out extensive due diligence on potential suppliers, requiring financial, insurance and other details as part of a tender for work, others will not. In my judgment the average consumer in this case will exercise an average degree of attention to the identity of the potential supplier but not the high degree of scrutiny for which the Defendants contend, which I accept he may give to the financial, risk and other attributes of a potential supplier.iii)The different types of purchasing process described in sub-paragraph (ii) above form part of the context within which the average consumer operates. I am satisfied that the potential for confusion of the average consumer can occur at various stages of the purchasing process: for example, when inviting suppliers to price a job, or to submit information for the purposes of pre-approval, or when notifying suppliers of a tender process and inviting them to participate.iv)I find that the average consumer in this case is sensitive to the reputation of a potential supplier and places a value on previous dealings he has had with them and recommendations he has received of that supplier from others. Signs used by the Defendants 112.It is common ground that the Defendants’ use complained of falls into three categories: (i) use of ORANMORE PRECAST or ORANMORE PRE-CAST simpliciter, (ii) use of the ORANMORE PRECAST or ORANMORE PRE-CAST together with the First Defendant’s Device (which I will refer to as ORANMORE Signs plus device); and (iii) use of ORANMORE in www.oranmore.co.uk (this is listed as a separate issue – Issue 10 – but I find it convenient to consider it together with the other uses). Issue 3 - Comparison between Registered Mark and signs Submissions 113. Dealing with the Registered Mark ORAN PRE-CAST and the signs ORANMORE PRECAST or ORANMORE PRE-CAST simpliciter first:i)It is common ground that: that PRECAST/PRE-CAST are identical non-distinctive and descriptive elements; and that there is no conceptual similarity between ORAN PRE-CAST and ORANMORE PRECAST because, although Oranmore is an Irish place name, a UK consumer is unlikely to know that or to perceive Oran or Oranmore as having any particular meaning.ii)Oran’s case is that the Registered Mark and the ORANMORE Signs simpliciter are so highly similar as to be easily interchangeable, giving rise to a high likelihood of confusion even absent any evidence of actual confusion. Mr Moody-Stuart submits that: the entirety of the Registered Mark is contained in ORANMORE PRECAST and ORANMORE PRE-CAST; they are visually and aurally very similar; the first syllable of the Oranmore Signs is the visually and aurally dominant one; and the only addition to the Registered Mark is the single syllable ‘MORE’ which comes after the visually and aurally dominant first syllable ‘ORAN’. Mr Moody-Stuart submits that suggests an additive connection, i.e. something which is ‘more ORAN’.iii)Mr Moody-Stuart submits that there is no basis for suggesting that ORAN/ORANMORE are the dominant elements in the mark and signs such that the identity between the second words PRECAST/PRE-CAST would be disregarded. PRECAST/PRE-CAST are not negligible components causing this case to fall within the guidance in sub-paragraph 52(d) of Specsavers.iv)Mr Moody-Stuart submits that, for the purposes of Specsavers sub-paragraph 52(h), ORAN is highly distinctive, as it has no particular meaning for UK consumers and it is not descriptive of, nor has any relationship with, the goods and services for which it is registered. ‘Oran’ has no meaning or relationship to precast concrete per se. Mr Harbottle disagrees and submits that ORAN cannot be said to have a highly distinctive character. v)Mr Harbottle for the Defendants submits that the average consumer is unlikely to attach any significance to the word PRECAST/PRE-CAST, which is wholly descriptive and commonplace in the pre-cast concrete industry and so negligible. He does rely on the guidance in sub-paragraph 52(d) of Specsavers, and asks me to make the comparison solely on the basis of ORAN and ORANMORE as the dominant elements in the mark and signs. Alternatively, he says that even if PRECAST/PRE-CAST are not negligible, the overall impression of the mark and sign conveyed to the public are dominated by ORAN and ORANMORE.vi)He submits that ORAN and ORANMORE, are visually very different, Oranmore being twice the length; and aurally very different, Oranmore having three syllables not two. Alternatively he submits that any similarity between ORAN PRECAST and ORANMORE PRE-CAST is ‘very slight’, and relies on evidence that the industry tolerates close names, such as CB Precast and CBS Precast.vii)Mr Harbottle disputes that there is any additive quality to the ‘MORE’ in ORANMORE and submits that ‘ORAN’ is not dominant in ORANMORE, as the words are very different and ORANMORE stands alone, with no conceptual similarity. Conclusion 114.Upon evaluating the mark and signs through the eyes of the average consumer, and in the context of the disputed use, I am satisfied that: the entirety of the Registered Mark is contained in ORANMORE PRECAST and ORANMORE PRE-CAST; PRECAST/PRE-CAST, although non-distinctive and descriptive, cannot be described as negligible components within the mark and signs such that this case falls within sub-paragraph 52(d) of Specsavers; accordingly I consider the overall impression of the mark and the signs as a whole; I find them to be visually and aurally very similar, but with no conceptual similarity; although PRECAST/PRE-CAST are not negligible, because of their non-distinctive and descriptive nature, the overall impression of the mark and sign conveyed to the public are dominated by ORAN and ORANMORE; and the first syllable of the ORANMORE Signs is the visually and aurally dominant one.115.I am not satisfied that ‘MORE’ in ORANMORE provides the additive quality for which Oran contends. Nor do I find relevant to this evaluation of similarity the Defendant’s contention that the pre-cast concrete industry tolerates close names, such as ‘CB Precast’ and ‘CBS Precast’. I accept that probative evidence on the point might form part of the context against which I carry out such an evaluation, but as Mr Moody-Stuart submits, I have no such evidence. Accordingly I cannot know whether they are, in fact, connected companies; whether they are locked in their own trade mark dispute; etc. I have no evidence about them save their names.116.Finally, for the purposes of the guidance in Specsavers sub-paragraph (h), I find that the Registered Mark has acquired a highly distinctive character, for the reasons Mr Moody-Stuart gives.117.For those reasons, and when considered within the context of the use in relation to identical good and services, I find that the average consumer would consider there to be a high degree of similarity between the Registered Mark and the ORANMORE Signs simpliciter.118.Dealing next with the Registered Mark ORAN PRE-CAST and ORANMORE PRECAST plus device: Submissions i)Oran’s case is that the ORANMORE Signs plus device encompasses all of the Registered Mark. Mr Moody-Stuart makes the same submissions as to visual and aural similarity as for the ORANMORE Signs simpliciter. He accepts that the addition of the First Defendant’s Device makes the sign and the mark less visually similar, but submits that the words retain an independent distinctive character as part of the composite sign and so any such reduction in similarity is slight.ii)The Defendants’ case is that the First Defendant’s Device uses the letters ‘OP’, which are the same first two letters for ORAN PRE-CAST as ORANMORE PRE-CAST, and so do not render the latter different from the former. Mr Moody-Stuart submits that the nature of the device is such that the ‘OP’ does no more to allude to ORANMORE PRECAST than the average consumer might equally allude to ORAN PRE-CAST. Comparing the Registered Mark and the ORANMORE Signs plus device, he submits that there exists a likelihood of confusion.iii)The Defendants submit that the device does not represent the letters ‘OP’ but is a letter P in a circle, with no conceptual significance. Visually, it adds a significant element to the overall impression of the sign making the mark and the sign visually dissimilar. Mr Harbottle submits that the average consumer would not consider it to impart a high level of similarity to the Registered Mark. Conclusion 119.I find that the average consumer would consider the First Defendant’s Device to have some conceptual significance as it would read it as the letters ‘OP’ and not a letter P in a circle as the Defendant contends. It would do so because the dominant element of the ORANMORE Signs, as I have already found, is the ORANMORE element, not PRECAST/PRE-CAST which is non-distinctive and descriptive and accordingly the average consumer would look for the letter ‘O’ in the device to make sense of the more visually significant ‘P’. I find that the device reduces the similarity between the Registered Mark and ORANMORE Signs somewhat, but I find that reduction will be relatively small because I accept Mr Moody-Stuart’s submission that the words ORANMORE PRECAST retain their independent distinctive character within the composite sign.120.For those reasons, and when considered within the context of the use in relation to identical good and services, I find that the average consumer would consider there to be a somewhat lower, but still relatively high degree of similarity between the Registered Mark and the ORANMORE Signs plus device.121.Finally, dealing with the Registered Mark ORAN PRE-CAST and ORANMORE (within www.oranmore.co.uk ): Submissions i)I believe it is common ground that the domain and the prefix are to be treated as entirely non-distinctive and would be ignored by the public as technical elements necessary in a website address, per page 111 of the Trade Marks manual. If it is not common ground, I find that to be the case. ii)Oran’s case is that ORANMORE would be viewed by the average consumer as an abbreviation of the complete sign ORANMORE PRECAST and he would be likely to bear in mind the identity between the missing element and the second part of the Registered Mark. Mr Moody-Stuart submits that ORANMORE and ORAN PRE-CAST are conceptually similar when used in relation to precast products, and when considered within the context of the use in relation to identical good and services, a likelihood of confusion is established.iii)The Defendants make no separate submissions on this point but acknowledge the domain is in use. Conclusion 122.In my judgment the average consumer is rarely likely to consider the website address www.oranmore.co.uk without also noting or being aware of the complete sign ORANMORE PRECAST. If he uses the domain to access the website, that is branded with the sign ORANMORE PRECAST. If he is sent the website address as a link by an employee of Oranmore, the complete sign will be present in the employee’s email address and probably the email signature as well. If he sees the link in marketing material or letterhead, that is likely to be in conjunction with the full use of the company name or use of the ORANMORE PRECAST sign. Accordingly I accept Mr Moody-Stuart’s submission that the average consumer would likely view ORANMORE as an abbreviation of the complete sign, as he is likely to be familiar with the abbreviation of marks within website addresses in this way. I find that any reduction in similarity will be correspondingly slight. Accordingly I find that there is almost the same level of similarity between the Registered Mark and ORANMORE alone as between the Registered Mark and the ORANMORE Signs simpliciter, and almost the same likelihood of confusion. 123.For completeness, I do not accept Mr Moody-Stuart’s submission that there is any conceptual similarity between ORANMORE alone and ORAN PRE-CAST, for the reasons I have already stated in relation to the ORANMORE Signs. Issue 5 - Evidence of actual confusion 124.In this case I have no direct evidence of confusion from members of the public. Oran relies on evidence of actual confusion set out in the first witness statements of Derek Duffy and John Dooley and the witness statement of Christina Lines. All of the evidence before me is either documentary evidence of communications from and to potential or actual consumers or suppliers or provided through Oran’s witnesses, who are employees and directors of Oran. Some of that is hearsay or double hearsay. I have no direct evidence from any potential or actual consumers or suppliers as to whether they were confused at all, and if they were, whether that confusion was caused by the similarity between mark and sign and identity of the goods and services for which the mark is registered and in relation to which the sign has been used, and the Defendants have been unable to subject any of them to cross-examination. I have been told why some of them were unable to be called, but it is unclear why none were called. Submissions and evaluation 125.Mr Harbottle for the Defendants reminds me that I am concerned with the average consumer, and cautions me that the confusion of others who are not consumers – including suppliers, employees working in the accounts department of customers with no input in procuring goods and services, or counsel and witnesses in this courtroom – may have some relevance as part of the overall context of the disputed use, but no further. I accept that. I remind myself that the question is whether there is a likelihood of confusion on the part of the public because the sign is the same as or similar to the registered mark and is used in relation to goods identical with or similar to those for which the mark is registered. This question must be considered from the perspective of the average consumer who is reasonably well informed and reasonably observant and circumspect. 126.The evidence of actual confusion relied on by Oran falls into a number of categories. I refer to some but not all of the examples before me:i)Evidence of actual confusion of potential consumers:a)May 2013, Liam Friel, seeking a price for flooring on an Irish development, emailed Oranmore instead, which replied “this is the UK company” and directed him to Oran. Oran relies on this as an example of an actual consumer being actually confused because of the similarity between Oran and Oranmore. Mr Harbottle for the Defendants submits that I cannot be sure, without hearing from Mr Friel, whether he emailed Oranmore on purpose, or because he was confused between Oranmore and Oran, and if the latter, what caused that confusion. I accept that. However, given that Mr Friel and the development were based in Ireland and there is no obvious reason why he would seek a supplier in Norfolk, and given that Mr Friel did not continue to deal with Oranmore but allowed himself to be redirected to Oran, I find it a fair inference that he had been confused between the two companies and I allow it some probative value;b)10 September 2014, Henry Hathaway of Toureen Group Ltd contacted Oran by telephone and informed Christina Lines that he had been led to believe, by Oranmore, that it was ‘part of Oran’. Mrs Lines made what she described as a contemporaneous note of the conversation immediately after the phone call, which said “He phoned looking for Sean Sharkey’s contact number and was put through to me. He dealt with Sean when he was working for Oran… he was surprised to learn that Oran and Oranmore were two separate companies. He said that he has dealt with Sean since Oranmore started up and was very clear that he was specifically led to believe by Oranmore that the two companies were one and the same, and he believed he was dealing with us”. In cross-examination she confirmed that she didn’t ask him to explain how he had come to think they were connected, or how he had been led to believe they were ‘one and the same’, as she didn’t want to talk about the dispute between Oran and Oranmore with a customer. Mrs Lines’ evidence was that she had called Mr Hathaway to see if he would appear as a witness in this case but he didn’t want to get involved. Ross Melville’s evidence is that the only dealings Oranmore had with Mr Hathaway were with Sean Sharkey, some time after this call, in June 2015. His evidence was not challenged in cross-examination. Accordingly, Mr Harbottle submits that it is improbable that Mr Hathaway said what Mrs Lines’ note reports, and asks me to find that the note is not sufficiently accurate to rely on. I do not make that finding. It is inherently implausible, in my judgment, that Mr Hathaway would phone Oran looking for Sean Sharkey if he had never had any dealings with him before, or that he would raise the issue of confusion between the two companies unless he was actually confused. In any event, I find Mrs Lines to be a credible and reliable witness and so I accept Mrs Lines’ evidence that the note she made was contemporaneous and therefore likely to be accurate. The only alternative is that Mrs Lines fabricated this conversation with someone who, coincidentally, did deal with Sean Sharkey at Oranmore some months later. That has suggestion has not been made by the Defendants and seems equally implausible. Accordingly it seems more likely than not that Ross Melville is mistaken that Sean Sharkey had not dealt with Mr Hathaway for Oranmore before June 2015. Sean Sharkey was not cross-examined on this point as his evidence was closely limited as to subject matter not including this. Subject to the caveats that I do not know whether and how the confusion arose, I find that I cannot disregard this evidence and I do give it some probative weight.c)February 2014, an agent for McCarthy & Stone (Developments) Ltd, when investigating a faulty access link to an online platform for tender submissions, questioned whether Oran and Oranmore were ‘one company’. It is clear from Christina Lines’ evidence and the documentary evidence of an exchange of emails, that both Oranmore and Oran were registered to McCarthy & Stone’s tender platform as two separate companies under two separate email addresses. The employee who invited participation in the tender, when told that Oran was having difficulties logging in to the platform, noted the two registrations and two email addresses and questioned whether Oran Precast and Oranmore Precast Ltd were the same company. Mr Harbottle submits this is not sufficient to show evidence of actual confusion but concedes that it may give cause to wonder. I disagree and do consider this evidence to be quite powerful. In my judgment it shows an actual consumer in the process of inviting and managing tenders, aware of Oran and Oranmore as suppliers of identical or similar goods, with sight of both the Registered Mark and the ORANMORE PRECAST Sign, being confused by whether Oran and Oranmore are a single company. I give it significant weight.ii)iii)Customers contacting Oran asking for details of its UK office when it did not have one: March 2013, Mr Mury of Danimore Construction. Oran submits that Mr Mury must have been referring to Oranmore because Oran did not have a UK office at that point. I am unconvinced. Oran previously had a UK office and I heard some evidence that in fact its virtual office facility in the UK was still running at this time, despite no payments being made to it. Without hearing from Mr Mury I am not prepared to draw an inference of confusion at all, let alone an inference as to how any such confusion might have arisen. 127.Oran also relies on instances of ‘wrong way round’ confusion of which the following are examples:i)Potential consumers getting in touch with Oran in the mistaken belief that they are Oranmore, or having dealt with Oranmore previously, thinking they are the same company: Mr Hayes of O’Halloran & O’Brien Limited – quote previously provided by Oranmore for the supply of precast stairs, sent an email to Oran asking it to tender for twinwall. Mr Harbottle for the Defendants accepts this as an example of a consumer being confused about who he received a quote from, but suggests that shows he is not paying the kind of attention the court should expect from the average consumer. I cannot draw that inference. I could equally draw the inference that he represents the average consumer showing an average level of attention but nonetheless being confused. Again, subject to the caveats that I cannot know without asking Mr Hayes what caused his confusion, I cannot disregard this evidence and I give it some weight; ii)Evidence of confusion of suppliers and potential suppliers to Oranmore: May 2012, Mr Bayford of Anglian Doors writing to Oran saying “I understand that Oran has taken over” the Weeting facility of Oranmore, and seeking a contract to maintain the doors. Mr Harbottle submits that it is not clear how Mr Bayford formed that impression, and reminds me that Richard Burke accepted that he had given Mr Bayford his contact details some months earlier, at a time when Oran was carrying out due diligence at the Weeting facility. Mr Moody-Stuart submits that he must have considered who took over the plant and seeing Oranmore assumed it was Oran. I cannot draw this inference on the information before me. He could equally simply have heard that the plant had been taken over and assumed that the new lessee was Oran, who had recently been carrying out due diligence into it. I find this example has little probative value. Conclusion 128.Taking all of these examples into account, and standing back and considering them overall, although some of the evidence upon which Oran relies is of limited or no probative value, I consider that there are enough examples of sufficient weight to give positive support to Oran’s case that the identity of the goods and services provided by Oran and Oranmore and the similarity between the Registered Mark and the Oranmore Signs (with or without the First Defendant’s Device) have caused a number of potential and actual consumers to believe either that there is an economic connection between Oran and Oranmore or that they are the same undertaking. Issue 4 - Likelihood of confusion 129.It is for me to assess the likelihood of confusion globally, taking account of all relevant factors, and judging the matter through the eyes of the average consumer who is reasonably well informed, reasonably circumspect and observant; who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them that he was kept in his mind; and who has the additional attributes that I have previously identified. 130.In this case, the goods and services to which the Registered Mark and the ORANMORE Signs and First Defendant’s Device are used are identical. I have found the Registered Mark to be highly distinctive. I have found the Registered Mark and the ORANMORE Signs to have a high degree of similarity and the Registered Mark and the ORANMORE Signs plus First Defendant’s Device to have a somewhat lower but still relatively high degree of similarity. I have found some evidence in support of the contention that the association between the mark and signs causes the public to wrongly believe that the respective goods and services come from the same or economically linked undertakings. For those reasons, I am satisfied that all of the disputed uses by the Defendants of the ORANMORE Signs alone or with the First Defendant’s Device give rise to a likelihood of confusion. Issues 11 to 14 – Consent Copyright Licence Submissions 131.132. Conclusion 133. 7.12.11 Email Law 134.The parties agree that the relevant law is that considered by the CJEU in Zino Davidoff SA v AG Import Ltd (and others) in Joined Cases C-414/99, C-415/99 and C-416/99 [2002] CH 109, [2002] RPC 20. Mr Moody-Stuart relies on Lewison LJ’s summary of the principles to be gleaned from this case in Honda Motor Co Ltd v Neesam at paragraph 5:“In the joined cases of Zino Davidoff SA v A & G Imports Limited and Levi Strauss & Co v Tesco Stores Limited… the European Court of Justice said that the concept of consent for this purpose was to be uniformly interpreted across the whole of the EU. The ECJ made a number of important points. First; consent amounts to renunciation of the right to the trademark proprietor, and must, therefore, be unequivocally demonstrated. Second, and intention to renounce will normally be gathered from an express statement. Third; there may be circumstances from which consent may be inferred, but it is an actual consent and not a deemed consent, that must be established. Fourth; it is, in almost all cases, for the trader to prove consent, not for the trademark proprietor to prove the absence of consent. Fifth; consent cannot be inferred from the trademark proprietor’s silence, nor from the fact that the goods carry no warning, nor from the fact that the trademark proprietor originally placed goods on the market without any further restriction on the onward sale of those goods.”135.Mr Harbottle makes the following additional points:i)The need to unequivocally demonstrate consent does not affect the standard of proof, which is the normal civil standard, but it does mean that a proved act which is merely consistent with consent, but also consistent with its absence, is not enough (Mastercigars Direct Ltd v Hunters & Frankau Ltd [2007] RPC 24 at paragraph 19);ii)Effective consent for these purposes can only be given by someone with authority to give such consent. There is apparent authority if: (i) Oran has expressly represented to the Defendants by words or conduct that the person who is supposed to have given consent had Oran’s authority to do so; and (ii) the Defendants did in fact rely on that representation (Chitty on Contracts, 32nd ed paragraph 31-056). Submissions 136.The Defendants accept that the 7.12.11 Email does not use the words ‘consent’, ‘licence’ or ‘Oranmore’. However Mr Harbottle submits that the email as a whole can be read as an unequivocal, permanent, unconditional renunciation of Oran’s rights in respect of the use of the Oranmore name by the Defendants. He particularly relies upon John Dooley’s statements “I really don’t have a problem with the overall situation now that it’s out in the open”, “I’m sure there will be opportunities for both companies to help each other out going forward” and “I believe if we all pull together and be straight up about things we shouldn’t have any problem. Again, I do wish ye luck with it.”. He asks me to consider the email in the context that Richard Burke and Ross Melville understood Oran to have decided to cease selling Hollowcore in the UK in April 2011 and so it would be ‘unsurprising’ that Oran’s directors would have no objection to the operation of a competing UK Hollowcore company run by members of their own families. Of course I have found they did not make that decision.137.Oran’s position can be fairly summarised, I think, by a single one of Mr Moody-Stuart’s submissions: “Hopeless”. Conclusion 138.In his closing submissions Mr Harbottle conceded that if I accepted John Dooley’s evidence that on 7 December 2011 he was told that the trading name of Oranmore was “a work in progress”, it made consent ‘very difficult’. I have accepted that evidence. Even if I had not, however, I would have found this email to be a very long way from complying with the stricture in Davidoff at paragraph 53 that: “it follows… that consent must be expressed positively and that the factors taken into consideration in finding implied consent must unequivocally demonstrate that the trade mark proprietor has renounced any intention to enforce his exclusive rights.”. In my judgment this email is nothing more than an acknowledgement by John Dooley that Ross Melville is starting a new company, an expression that perhaps it can work with Oran in the future, and some handsome good luck wishes. There is nothing whatsoever in it, in my view, which can be interpreted as a trade mark licence at all, let alone the wide ranging one for which the Defendants contend. I accept Mr Moody-Stuart’s submission. Issues 15 - 20 – Acquiescence 139.I will deal with this shortly. In light of my findings on the Copyright Licence and the 7.12.11 Email, and in the context of my finding that at the time of the 7.12.11 Email John Dooley had no knowledge of the likely trading name of Oranmore, the Defendants’ contention that the Copyright Licence and the 7.12.11 Email amounted to: (i) encouragement to Oranmore to trade under the name of ORANMORE; or (ii) assurances that Oran would not object to Oranmore trading in Hollowcore in the UK under the name Oranmore and the First Defendant’s Device, must fail. No other acts of encouragement are pleaded or relied upon. Conclusion on infringement 140.It follows that Oran has established the conditions for infringement under section 10(2) of the 1994 Act. Had I not found that Oran was precluded from bringing the Registered Mark infringement claim by operation of the Compromise Agreement, I would have given judgment to Oran on the infringement claim. PASSING OFF 141.Oran also relies on passing off pursuant to the ‘classical trinity’ of that tort as described in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL), namely goodwill, misrepresentation leading to deception and damage. As previously stated, goodwill is not in issue. 142.Insofar as the passing off claim concerns the use of the ORANMORE Signs with and without the First Defendant’s Device, both parties rely on the same submissions in respect of whether the use of the signs constitutes a misrepresentation likely to lead to deception on the part of the public as they did in relation to confusion. I am satisfied that my findings in respect of confusion for infringement of the Registered Mark are equally as persuasive of deception of the public for the part of passing off, in particular given the support provided by the examples of actual confusion relied on by Oran. Accordingly I am satisfied that use of the ORANMORE Signs is a misrepresentation to the public which leads or is likely to lead the public to believe that the goods or services offered by it are the goods or services of Oran.143.I will deal briefly with the issue of Oran’s own use of its OP Device. I do not find it to be conceptually very similar to the First Defendant’s Device such that the use of the First Defendant’s Device alone is a misrepresentation likely to lead to deception. It is, in my opinion, the ORANMORE Signs that cause the misrepresentation, and that misrepresentation is not negated by the addition of the First Defendant’s Device. 144. Finally, I accept Mr Moody-Stuart’s submission that such misrepresentations are likely to damage Oran’s trade or business, as Oran and Oranmore are direct competitors in the UK market and there is some evidence before me that Oran has already suffered lost sales in the UK by reason of Oranmore’s trade. Accordingly it follows that Oran has made out its case in passing off. Had I not found that Oran was precluded from bringing the passing off claim by operation of the Compromise Agreement, I would have given judgment to Oran on the passing off claim in accordance with the paragraph above. OVERALL CONCLUSION 145.It follows from my findings in respect of the Compromise Agreement in paragraph 98 above, that I dismiss the claim. Annex 1 First Defendant’s Device (and ORANMORE Sign plus First Defendant’s Device): Oran’s OP Device: