Case No. EWHC-3296-(IPEC)

46. Equisafety claims that Battle’s actions described above amounted to an infringement of its trade mark under s.10(1) of the Trade Marks Act 1994. Section 10(1) states that: “ A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered ”. 47. Battle denies liability under s.10(1) on the basis that its sign is not identical to the mark “Mercury”. I agree and I reject the s.10(1) claim. 48. There have been cases, such as British Sugar Plc v James Robertson & Sons Ltd (the “Treat” case), [1996] R.P.C. 281 and Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch), in which it has been found that a word or image has been used as a sign in itself even where it has been used in conjunction with other words and/or images. However, in my judgment the present case is not such a case. In my judgment, in the eyes of the average consumer, on the basis of the evidence summarised above, the sign used by Battle in relation to the relevant goods was clearly either “HyVIZ Silva Mercury Reflective” (and I note to use of a capital letter at the start of each word) or “Silva Mercury” and such signs are not identical to the mark “Mercury”, just as the sign “Reed Business Information” was not identical to the mark “Reed” and the sign “OCH Capital” was not identical to the mark "OCH” in, respectively, Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159 and Och-Ziff management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch). It is possible that in assessing what sign Battle was using, the average consumer might disregard the “HyVIZ” and “Reflective” elements but even that leaves one with a sign (“Silva Mercury”) which is not identical to the Mercury mark.