Case No. EWHC-3296-(IPEC)

54. Turning to condition (vi), the approach to be applied in determining whether there is a likelihood of confusion was summarised by Kitchin LJ in Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41 at [31]-[32], as follows: “(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 creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.” 55. As noted above, for present purposes, the average consumer could be either a retailer or the end user of equestrian products. There is clearly a higher likelihood that the latter would be confused by Battle’s use of the word mercury for its high visibility products, particularly as such a consumer is unlikely to exercise more than a moderate amount of care when buying products of this type and, in particular, when buying them through a retailer and/or online. The likelihood of confusion 56. In my judgment, looking at the evidence globally through the eyes of an end user and bearing in mind that, for the purposes of s.10(2), the likelihood of confusion is assessed in the context of the actual use that has been made of the sign complained of, I have concluded that there is a likelihood of confusion in that an end user is likely to assume that there was some association between Equisafety and the products being marketed and sold by Battle under the HVSMR or Silva Mercury labels. That association might be that the relevant products were derived from or were licenced by Equisafety or, possibly, that they have been co-branded in the sense set out in Liverpool Gin Distillery Limited v Sazerac Brands LLC [2021] EWCA Civ 1207 at [12]. 57. It seems to me that this conclusion follows from the fact that Battle’s sign is being used in relation to identical goods, save for the phone holders which are similar goods, and from the clear visual and aural similarities between the sign and the mark to which I have referred. In reaching this conclusion, I reject Mr Carter's submissions that the average consumer would be taken by the unusual spelling of the words “Hy VIZ” and “Silva” and by their earlier positioning within the HVSMR sign such that those words would dominate the overall impression of the HVSMR sign with the result that “no, or vanishingly little distinctive weight” would be attached to the word mercury. In my judgment, although Battle has used the word “Mercury” as part of the HVSMR sign or of the Silva Mercury sign, given the essentially descriptive nature of the words “Hy VIZ”, “Silva” and “Reflective”, I find that the average consumer would take notice of the word “Mercury” and would regard it as being of some trade mark significance. Distinctive character 58. I have concluded that there was a likelihood of confusion given the inherent distinctiveness (and non-descriptiveness) of the Mercury mark in relation to this type of goods. However, Equisafety also argued that that likelihood of confusion was increased by the distinctive character that the Mercury mark had acquired by reason of the uses it had made of it. In this regard, I have not been provided with any evidence regarding the size of the market in high visibility products for the equestrian market nor of Equisafety’s share of that market, although I am told that its highest annual turnover was £484,858 in 2018. Indeed, somewhat unhelpfully, Equisafety has redacted any information that might help determine the volume of its sales of Mercury products. Similarly, although I am told that Equisafety’s advertising spend is around £35,000 a year, I have no information as to what part of that figure relates to the Mercury mark. Nevertheless, I accept that the evidence before me is sufficient to establish that Equisafety’s use of the Mercury mark since 2015 has given that mark a distinctive character and that this increases the likelihood of confusion arising from Battle’s use of the word mercury. I also accept Equisafety’s case that that evidence is relevant even though it relates to uses made of the word Mercury before the application to register it as a trade mark. 59. In the first place, Equisafety’s Mercury products were referred to reasonably extensively in various equestrian publications in 2015, 2016 and 2017. This was in the form of advertisements placed by Equisafety in respect of its “new Mercury range”, its “BEST SELLING Mercury Range”, its “New Charlotte Dujardin Collection”, and its “Autumn/Winter 2018/19 collection” all of which included pictures of the Mercury jacket and/or of other Mercury products. There were also various product reviews of Mercury products under headings such as “Hi-viz that's set to shine!” (Equestrian Trade News, September 2015), “What a brilliant jacket!” (Equestrian Trade News, January 2016), “Equisafety – Mercury Jacket” (May 2016), “Look great, stay safe” (Your Horse, winter 2016), “Shine Bright - Stay Safe” (Equi-Ads, January 2017) and “Illuminating ideas” (Equestrian Trade News, February 2017). 60. Also significant is the evidence of Equisafety’s Mercury products and the Mercury mark being referred to and promoted by Equisafety on Facebook and Instagram. As early as 2015, Equisafety's Facebook adverts for its Mercury jacket were attracting hundreds of “likes” and, by January 2016, this had risen to 2,323 “likes”. Ms Fletcher's evidence (which I accept) was that Equisafety has over 2,200 followers for its Instagram page and more than 57,880 likes and 58,683 followers for its Facebook page. 61. Against this, Mr. Carter pointed to the fact that Equisafety’s Mercury products had been marketed as part of Equisafety’s “Night Rider” range or of its “Charlotte Dujardin Collection”. This was certainly true in some (although not all) occasions. However, I do not agree with Mr Carter's conclusion that this shows that Equisafety’s use of the Mercury mark had been “staggeringly inconsistent” nor do I accept that this prevented the Mercury mark acquiring a distinctive character. The brand of an individual product can clearly be distinctive of that product, even though that product forms part of a wider range of products with its own separate brand. Mr Selmi’s example was of the Samsung Galaxy. Here, the marketing described above was clearly of products under the Mercury mark and was capable of giving that mark a distinctive character of its own. 62. Moreover, in my judgment, the distinctive character of the Mercury mark would have been very significantly enhanced by Equisafety's sponsorship of Charlotte Dujardin, which started in 2016. As the average consumer in this case would have been very well aware, Ms Dujardin is probably the leading dressage rider in the world and Equisafety used her name and picture extensively in its marketing materials. Whilst Ms Dujardin’s role was not limited to the Mercury products, the Mercury Jacket was marketed as part of Equisafety's “Charlotte Dujardin collection” and pictures of her in Equisafety's marketing materials between 2016 and December 2018 were usually of her wearing a Mercury jacket and seated on a horse wearing a Mercury rug and Mercury leg boots which products were often specifically captioned as being Mercury products. The evidence also includes an Instagram post by Ms Dujardin herself, featuring a photograph of her wearing a Mercury jacket and the comment “as the nights are drawing in, do check out the Mercury range created with my sponsor @equisafety” . Whilst this particular post (made on 22 October 2019) came after most of the events complained of, it demonstrates the impact of and value attached to Ms Dujardin’s name as it attracted 13,993 “likes”. 63. I should note that, in her evidence, Ms. Fletcher also relied on Equisafety’s sponsorship of a number of other very well-known riders. However, in contrast with the position regarding Ms Dujardin, there was no evidence before me linking these other riders to the Mercury products or mark so these other sponsorships do not assist Equisafety’s present case. 64. There was further evidence of Equisafety’s use of the Mercury mark from 2015 through its advertising, promotion and sale of Mercury products at its trade stands at leading equestrian events taking place annually across the UK. Ms Fletcher’s evidence was that these events included the British Equestrian Trade Association (BETA) show, the Blenheim Horse Trials, the Badminton Horse Trials, the Cheshire Horse Show, the Blair Castle International Horse Trials, Your Horse Live, the West Country Christmas Show, the Horse of the Year Show in Birmingham and the London Horse Show at Olympia. I see no reason not to accept this evidence, particularly given the photographs produced showing some of these stands. In two of these photographs, a large scale advertisement for the MERCURY JACKET can be seen and in others products from the Mercury range are clearly on display and sale. 65. Finally, there was evidence that Equisafety has sold (or may have sold) its Mercury products to leading equestrian retailers such as Weatherbeeta (from 2015), Hucklesby Associates (from 2017), Trilanco (from 2018) and, possibly, Aldi (in 2016). However, it is difficult to place too much weight on this evidence given that Equisafety has not provided any evidence as to the level of sales to these retailers.