Conclusion
under art.7 of the Trade Mark Directive 64. Nomination had legitimate reason to oppose JSC’s sales of Nomination base links pursuant to art.7(2) of the Trade Mark Directive. The packaging used by JSC to supply its customers, blister packs or polythene bags, was liable to damage the reputation of the Trade Marks. Such sales therefore infringed the Trade Marks. Whether JSC used the Nomination sign in relation to its own links 65.I was shown several images of websites on which JSC have advertised products for sale. One was a posting on eBay dated 17 March 2015 which advertised bundles of one JSC link plus one Nomination link: “1 x Family Superlink Daisy Charm 1 x Genuine Nomination Italian Charms” 66.The advertisement continues: “JSC Italian Charm – DAISY CHARM Plus Nomination Charm Item description 18mm (superlink) Family charm of your choice by Daisy Charm®, plus you also get a single branded Nomination link for your bracelet. So you will receive one branded Daisy Charm and one plain Nomination link, both compatible and for the classic size bracelet. … Mix and match with the thousands of Daisy Charm UK branded Italian charms for your classic Italian charm bracelet that can be found on our eBay store, just click on the door symbol near the top of the page. The Daisy charm is 9mm x 18mm in size, has a matt finish, and the Nomination charm is 9mm in size and has a shiny finish. All our 9mm charms come individually packaged in a small blister packet and have our brand name – Daisy Charm – stamped on the back.” 67.A typical reader of this and other online advertisements from JSC would reasonably have priorities other than pondering in depth which link is made by whom. However, I think a reasonable reader would have received a blurred message about the manufacturing source of the two bundled links and might have formed the impression that both are made for JSC, one of them being styled ‘Nomination’. 68.Mr Pearson argued that proof of what consumers actually thought came from the complaints they made. He drew my attention to seven letters and emails. 69.The first, dated 8 March 2016, was from Natalie Hall of Xen Jewellery Design Ltd in Beverley, East Yorkshire, an authorised Nomination dealer. The letter is to Mr Brown. It begins: “Dear Ken, I would like to drawer your attention to problems and issues we are facing as a result of Nomination Stainless Steel plain links being pictured alongside copy product of Nomination Charms by JSC which seem to be on Ebay and Amazon. Firstly there is never a week goes by that we do not have a customer that enters the store and asks us to fit the non-genuine item to their Nomination Bracelet, we point out this is not a genuine Nomination charm but another Italian style charm and that by fitting this to their existing Nomination bracelet this will void the guarantee by Nomination on their existing charms. Generally just stating the item is not genuine is enough to stimulate a response from the consumer. ‘IT IS GENUINE and it came with a steel link that was clearly marked Nomination!’, we then explain that the plain link is indeed genuine but that the charm isn’t. We then try to explain to the customer that the Nomination charms are clearly marked and we show them the stamp on the back.” 70.Ms Hall’s letter continues, stating that consumers are unconvinced that their JSC links are not Nomination links and that this creates ill feeling. She also discusses packaging. 71.The second, dated 9 March 2016, was from Shaun Bell, Managing Director of Joshua James, a jewellery business in Hessle, East Yorkshire, addressed to Nomination. Mr Bell complained about a muddle among consumers between charms sold by businesses such as JSC and Nomination charms, but I find his letter too unclear to be sure what the confusion was and why it happened. 72.The third was an email to Mr Brown dated 9 March 2016 from Dale Gamble, Managing Director of J&D Duo Jewellery in Yorkshire. Like Ms Hall Mr Gamble refers to JSC’s charms and complains about customers bringing charms which are not made by Nomination expecting them to be fitted to their Nomination bracelets: “…when we refuse we have had some serious abuse from these customers, as they just don’t understand and in most cases believe they have purchased a genuine product at a reduced price from JSC.” 73.The email is headed ‘Without prejudice’. Mr Sinai argued that this showed that Mr Gamble was not prepared to commit himself to the truth of what he said in his letter. I do not accept that. Clearly Mr Gamble did not know what the term means because it was inappropriate in context. I cannot say what he intended by it. 74.Mr Pearson referred me in closing to four further emails but I have not been able to get much from them one way or the other. 75.Mr Brown admitted very fairly in cross-examination that the timing of the three communications to him in March 2016 was not coincidental. They had all been prompted by him as part of an exercise to gather evidence of confusion. I do not believe that this undermines the truth of their contents. I also take the view that the confusion reported by Mr Hall and Mr Gamble was likely to have occurred at some Nomination outlets elsewhere. There is no reason for me to think that there was anything atypical about the way that Xen Jewellery and J&D Duo Jewellery traded such as to make them the only places where confusion could emerge. 76.It seems to me that JSC’s advertising and supply of bundled Nomination base links with its own Daisy Charm links has led to confusion in the mind of some of the relevant public. I would guess that it took different forms, but I find that among a significant proportion the confusion took the form of a belief that charms not made by Nomination were genuine Nomination charms. 77.Issue 3 in the present action is about whether the NOMINATION sign was used by JSC in relation to JSC’s own charms within the meaning of section 10(1) of the 1994 Act and its equivalent, art.5(1) of the Trade Mark Directive. 78.In Céline Sàrl v Céline SA, Case C-17/06, EU:C:2007:497, [2007] ETMR 80, the CJEU said (at [20]): “It is clear from the scheme of Art.5 of the Directive that the use of a sign in relation to goods or services within the meaning of Art.5(1) and (2) is use for the purpose of distinguishing the goods or services in question, …” 79.At least some of JSC’s customers thought that JSC’s use of the sign NOMINATION distinguished JSC’s Daisy Charm links as coming from Nomination. The inference to be drawn is that objectively assessed, the sign was used by JSC in relation to those goods. I find that JSC infringed the Trade Marks pursuant to s.10(1) of the 1994 Act. Misrepresentation 80. I have found that JSC’s use of the NOMINATION sign led a significant proportion of the relevant public to believe that JSC’s Daisy Charm links were supplied by Nomination. Such use of the sign therefore constituted a misrepresentation. Damage 81. The letters from Ms Hall and Mr Gamble point up the damage likely to follow from the misrepresentation: annoyance in the minds of Nomination’s customers and the consequent damage to its reputation. I find that there was damage. Conclusion 82. JSC has infringed the Trade Marks and passed off its own goods as being those of Nomination.