Case No. IP-2015-000152

Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110, [2014] E.T.M.R. 28 that: “The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. Other relevant factors are the scale of the use complained of and the likelihood of actual confusion being detected.” 82.Mr Small submits that: i)despite the Defendant selling the Product from the Listings for a significant part of the 4-year period from mid-2012 to March 2016, there is no evidence of actual confusion of consumers at all;ii) there are no complaints on Amazon reviews that the customers received a Feel Good UK flagpole rather than a Design Elements flagpole, nor that they even noticed they had received a different flagpole to that ordered; iii)Mr Coles’ evidence was that the Defendant received no direct customer complaints about the quality or brand of the Product supplied from sales from the Listings; iv)Mr Tolofson admits that the Claimants have received no such complaints. 83.Mr Small further submits that the Trade Mark has no distinctiveness at all to any of those consumers who make up the average consumer, except those who have previously bought one of the Claimants’ flagpoles and return to the Listings to buy or consider buying another, because the Trade Mark itself cannot be found online, whether on Amazon or elsewhere, it doesn’t appear on the Amazon listing and can only be found on the packaging and instruction sheet of the Claimant’s flagpole after it has been purchased and delivered to the consumer. 84.Mr Small asks the court to accept that the lack of actual evidence of confusion is significant, per Jack Wills, and submits that this coupled with the lack of distinctiveness of the Trade Mark to all but repeat customers means that the court can be satisfied that there is no likelihood of confusion on the part of the public. 85.I have considered the matter carefully and carried out a contextual assessment of the use of the sign, as required by Specsavers, as at the date that use commenced. In the context of the Trade Mark, that is 18 February 2013. The Defendant sold the Product from the Listings for a significant part of a 4 year period. It has disclosed sales of 1215 for part of that time but I am satisfied that the overall sales must have been significantly higher. That is a significant number of sales in the context of what is a niche product and in the context of the overall sales achieved by the Second Claimant in the same period, but it is a relatively low number in total.86.Mr Muir Wood submits that if a consumer was minded to complain about the Product it received from the Defendant not being a product of the Second Claimant, it would be more likely than not that they would complain to the Defendant. I accept that submission, but they would also have the opportunity to complain on the Amazon reviews, and they have not done so. 87.Of course the Claimants now make no case that the Product was of inferior quality or utility to the Claimants’ flagpole. It may be that customers noticed that they had not received what they had expected to receive, being a ‘DesignElements’ branded flagpole, but were happy to accept what they had as it fulfilled the requirements for utility, quality and price which had driven them to purchase from the Listing in the first place. In that case there would be confusion, but it would be unreported and accordingly unmeasurable. In fact that is the tenor of Mr Coles’ evidence when he said “If the customer gets what the advert shows and it is good quality, they are happy”.88.Taking all of the circumstances into account, I am satisfied on the balance of probabilities that there is a likelihood of confusion on the part of the average consumer. I am driven to this conclusion because of the weight of factors in favour of it, which include the high degree of similarity of the sign complained of to the Trade Mark, the identity of the goods, the distinctiveness of the Trade Mark to repeat customers, the careful consideration that the average consumer will have given to the information on the Listings before making his purchase, the real possibility of there being unreported actual confusion, and the likelihood that the average consumer will consider that the Product emanates from the stated manufacturer, DesignElements, or is economically linked to that source. Set against this is the lack of actual evidence of confusion over a four year period (not all of which involved sales of the Product on the Listings) and the lack of familiarity with the Trade Mark for that part of the average consumer construct which is not a repeat customer. Although I take those into account as significant, I do not consider that they outweigh the other factors. In particular I consider that those who are likely to be confused, or who may have been actually confused but not reported it, consititute a significant proportion of the relevant public which is sufficient to warrant intervention by the court.89.For those reasons I am satisfied that the use of the sign complained of in relation to the Product amounts to infringement of the Trade Mark pursuant to section 10(2) TMA. Issues (iii) – Reputation of the Trade Mark. 90.I turn now to whether there is infringement pursuant to section 10(3) TMA, the first limb of which is to consider whether the Trade Mark has a reputation in the United Kingdom amongst a significant part of the relevant public.91.On the Claimants’ own case the Trade Mark is used only by the Second Claimant and only for goods sold by it on Amazon.co.uk. The Claimants do not use it even on the same goods sold on other channels, such as Ebay. Mr Tolofson confirmed that it had no other online presence. There is no evidence of advertising or marketing of the Trade Mark put before me, except to the extent that it is used on the goods sold via the Listings and other listings of the Second Claimant on Amazon. Even on these listings, the Trade Mark itself does not appear. Mr Tolofson says that all text on Amazon listings must be plain text and I accept that. However, it would have been possible to include on the Listings a photograph of the packaged goods showing the use of the Trade Mark. That has not been done.92.I am satisfied that the only section of the public who has seen and is aware of the Trade Mark, and so the only section of the public with whom the Trade Mark can have a reputation, is that section which has actually bought goods upon which the Trade Mark has been applied, from the Second Claimant, from Amazon. I accept that every such sale will cause a reputation to some extent. The issue is whether there is a reputation in the Trade Mark with a significant proportion of the relevant public. 93.What is the relevant public in this case? Mr Muir Wood reminds me that the goods sold under the Trade Mark are not just flagpoles, but others including garden furniture. Flagpoles are a small, niche market and on the Claimants’ evidence, they form their highest sellers. Accordingly I can be satisfied that if the Trade Mark does not have a reputation amongst a significant part of the public concerned with flagpoles, any reputation in the very much larger garden furniture market will not assist it. However, I have no evidence how much of the public who are concerned with flagpoles may use Amazon, even if they go to look and do not buy. I cannot speculate. I do not know what other suppliers of flagpoles, or marketplaces of flagpoles, there are in the United Kingdom.94.What about the positive reviews on the Listings? The difficulty with considering them is that those which I can be certain relate to the Claimants’ products because they predate the sale by the Defendant of the Products on the Listing, all predate the Trade Mark. They can only be posted by those who know of the Sign as placed on the purchased flagpoles, not the Trade Mark. Those which postdate the Trade Mark (after 13 February 2013) are a mixture of reviews by those who bought flagpoles from the Second Claimant (and who know of the Trade Mark) and those who bought the Product (who do not) and I cannot distinguish between them. It is self-evident that positive reviews by those who bought the Product cannot enhance the Trade Mark as those sales are the acts which the Claimants say have been detrimental to the reputation of the mark. 95.Taking all these circumstances into account, I cannot be satisfied that the Trade Mark has a reputation amongst a significant part of the relevant public and the claim for infringement under section 10(3) TMA must fail. I move onto passing off. Issue (v) - Does the Claimants’ business have goodwill or reputation in England and Wales associated with the Sign? 96.Mr Muir Wood for the Claimants submits that the burden for establishing goodwill is not high. He relies on the case of