Case No. IP-2015-000152

SA v Sadas Vertbaudet SA (C-291/00) [2003] E.T.M.R. 83 in which the Court of Justice of the European Union gave the following guidance at page 1015: “…a sign is identical with the 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.” 69.Mr Muir Wood for the Claimants submits that aurally they are identical and conceptually there is no difference between them, being the same two English words in both the sign complained of and the Trade Mark. The Defendant does not appear to dispute this, and so I accept that they are.70.In relation to a visual comparison, Mr Muir Wood submits that they are visually identical as the average consumer will not recall the precise font in which the Trade Mark is registered, nor will he notice or remember the blue flag device which is part of the Trade Mark. The average consumer will merely recall the words “DESIGN ELEMENTS” which are identical words in both Trade Mark and sign complained of, albeit the sign removes the space between the words. Accordingly, he submits that the only differences are insignificant per LTJ Diffusion. Finally, Mr Muir Wood submits that the use of both the sign complained of and Trade Mark for the sale of identical goods, namely flagpoles strengthens the overall identity of the marks.71.Mr Small submits that they are not visually identical, because the sign complained of is a plain text word sign, presented with no spaces between the two words, and the Trade Mark is a stylised word mark in an unusual font presented as two separate words, plus a blue-coloured flag device. 72.I am not satisfied that the sign complained of and the Trade Mark are identical because: (i) the words ‘Design Elements’ within Trade Mark, which are in my judgment the dominant elements of the mark, are graphically represented in a stylised font which is not an everyday, normal typeface; (ii) the Trade Mark also has a blue flag device above the letter ‘g’ in design which is a distinctive albeit not dominant feature; (iii) the Trade Mark separates the words ‘Design’ and ‘Elements’ with a space, whereas the sign complained of removes the space between them and so reduces the identity between the Trade Mark and the sign. The distinctive font and the blue flag device are elements which are not represented at all in the sign complained of. In particular, the absence in the sign of the jaunty blue flag device of the Trade Mark is, in my judgment, not a difference which is likely to go unnoticed by the average consumer. 73.However I am satisfied of their visual similarity because: (i) the Trade Mark and the sign complained of are composed of the same two words using the same letters in the same order; (ii) although the sign removes the space between the two words of ‘Design’ and ‘Elements’, unlike in the Trade Mark, the fact that they are two separate words is visually maintained by the capitalisation of the first letter of each word; and (iii) there is no great degree of variation in the stylised version of the words used in the Trade Mark, which are easily recognisable in a highly legible, albeit unusual, font. 74.Because I find the sign and the Trade Mark to be aurally and conceptually identical and visually similar, I accept Mr Muir Wood’s secondary submissions that the sign complained of and the Trade Mark have a high degree of similarity. Issue (i)(b) - Is that use in the course of trade? 75.There can be no real dispute that the use of the sign complained of by the Defendant is use in the course of trade, as the Defendant has sold a significant number of Product units in so doing. Issue (i)(c) – Is the sign complained of used in relation to similar goods and services to those for which the Trade Mark is registered? 76.I am satisfied that the use of the sign complained of by the Defendant is use in in relation to the sale of flagpoles, which is an identical use to that for which the Trade Mark is registered. Issue (ii) - If so, does there exist a likelihood of confusion on the part of the public? 77.I have found that the sign complained of is highly similar to the Trade Mark and it is being used for the Product, which is identical use to that for which the Trade Mark is registered. Mr Muir Wood submits that in those circumstances there is a very high likelihood of confusion on the part of the average consumer described, although he acknowledges that there is no evidence of actual confusion before me. 78.Mr Muir Wood further submits that the Trade Mark is highly distinctive as the words which make up the Trade Mark – ‘DESIGN ELEMENTS’ - have no particular meaning in relation to flagpoles and are not descriptive of the goods to which they are attached. Accordingly, he submits, there will be a greater likelihood of confusion on the part of the average consumer who is already aware of the particularly distinctive nature of the Trade Mark, such as repeat customers who may have bought one flagpole from the Second Claimant and seen the Trade Mark on the packaging, and then returned to Amazon for one or more further purchases from the Listings. 79.Mr Muir Wood submits that if that average consumer returned to purchase additional flagpoles at a time when the Defendant had won the buy box, there would be a high likelihood of confusion in that the words ‘by DesignElements’ on the listing would confuse him into believing he was buying an identical flagpole of the Claimants, when in fact he would be buying the Product which is a different flagpole of different design and from a different source of goods.80.Mr Muir Wood relies in particular on the guidance at paragraph 52(k) of Specsavers, namely that where the association between the marks causes the public wrongly to believe that the respective goods come from the same or economically-linked undertakings, there is a likelihood of confusion. He submits that the average consumer in this case will believe, on purchasing from a Listing, that the Product supplied by the Defendant is that manufactured by or economically linked to the Second Claimant, and accordingly I can be satisfied that there is a likelihood of confusion on the part of the public. 81.Mr Small for the Defendant accepts that the absence of actual confusion is not fatal to the Claimant’s claim under Section 10(2)(b), but relies on the statement of Arnold J at paragraph 99 of