Case No. IP-2021-000046

141.The question is whether C has satisfied the Court that the fair and notional use of D1’s 2015 Trade Marks would amount to a misrepresentation to the public (whether or not intentional) which leads or is likely to lead the public to believe that goods or services offered by him are the goods or services of C.Relevant consumer142.The court must carry out a global assessment of the normal and fair use of D1’s 2015 Trade Marks for the services for which they are registered, compared to C’s ICE Sign and C‘s ICE Logo, following the applicable principles set out by the Court of Appeal in Specsavers International Healthcare Ltd v Asda Stores Ltd [2015] EWCA Civ 24, [2012] ETMR 17 at [51]-[52]. The question is what overall impression is provided by the marks in the mind or perception of the average consumer of the goods and services in question. I won’t set out the full principles here but remind myself that he or she is reasonably well informed, observant and circumspect, rarely has the chance to make direct comparisons between marks, rather relying on the imperfect picture of them he or she has kept in his or her mind, and whose attention varies according to the category of goods or services in question. He or she normally perceives the mark as a whole and does not analyse its various details. 143.The Defendants submit that the relevant consumer for the goods and services in question is a sophisticated one, albeit in relation to the Defendants attack on the validity of C’s ICE Trade Marks, it submits that the consumers involved include ordinary domestic consumers of the services in question. 144.C submits that the relevant consumer includes both trade customers for wholesale services and services relating to industrial equipment, and members of the general public for retail and rental services of non-industrial and/or domestic equipment, and the same is true of D1’s goods. I accept, as it appears, do the Defendants, that there is both a trade and a consumer customer base for C’s goods and services and for D1’s goods. Mr Killi and Mr Schless have provided their opinion that the customer base generally is sophisticated and knowledgeable, but Mr Killi in his witness statement describes how his customers are sometimes confused between the products, and he accepted in his cross-examination that even large trade customers wanted advice on the right machine for the job, were less interested in the brand of a recommended machine than its ability to do the job, and would often take that advice. It seems that the level of sophistication and knowledge of even trade customers is very variable. Accordingly I prefer C’s description of the average consumer, without a focus on sophistication.Assessment145.There is no dispute that C’s ICE Sign when compared to D1’s ICE Word Mark are visually, aurally and conceptually identical to each other. 146.Comparing C’s ICE Logo and D1’s ICE Logo, I am satisfied that the dominant component of both is the word ICE, so they are conceptually and aurally identical. I find both to be visually very similar. Both have a simple, sans-serif somewhat blocky, stylised font, albeit the font on D1’s ICE Logo is more squared-off than that in C’s ICE Logo. I am not convinced the average consumer, whether a trade or a consumer, would particularly note that difference if he was recalling each mark to mind and did not have them both before him. The impression of each is that C’s ICE Logo is in lower-case whereas D1 uses upper-case, but the only real distinction is in the letter ‘E’, as the ‘I’ and ‘C’ of both are not really case-specific. Both have “ICE” in white against a blue background, albeit it is a plain square shape with three rounded corners in C’s ICE Logo and a roundel with some shading and use of white to give the impression of a three-dimensional shape in D1’s ICE Logo. The square or roundel backgrounds on each, and the blue colours of each, are distinctive elements of the whole but not dominant, in my view. The overall impression that each provides is, in my judgment, one with a high degree of similarity.147.Comparing C’s ICE Sign with D1’s ICE Logo, as the dominant component is the word ICE, I also find these to be conceptually and aurally identical. Because of the simplicity of D1‘s ICE Logo with the dominance of the simple blocky word ‘ICE’, I also find them to have a high degree of visual similarity. 148.The Defendants submit that the difference between C’s services and the goods for which the marks are registered and the differences between D1’s 2015 Trade Marks and C’s ICE Logo with which C’s goodwill is associated should lead the Court to conclude that the challenge against the validity of D1’s 2015 Trade Marks should fail because, inter alia, C has failed to prove the fact of misrepresentation. 149.However, I have found that C had goodwill in C’s ICE Sign and C’s ICE Logo in relation to the sale of floor cleaning machines (as well as the provision of rental and servicing services for floor cleaning machines) by the relevant date and this was also true on 18 June 2015, the date that D1’s filed its applications for D1’s 2015 Trade Marks. I have also found that D1’s ICE Sign is identical to C’s ICE Sign and D1’s ICE Logo is highly visually similar, and aurally and conceptually identical to C’s ICE Logo and C’s ICE Sign, with a high degree of similarity. Those have accrued goodwill in the course of trade in identical goods to those for which D1’s 2015 Trade Marks have been registered: “floor cleaning machines” in class 7. Accordingly both limbs of the Defendants’ submission fall away.150.Although I have found that both C and D1 were using the relevant signs in a common field of trade, that of the sale of floor cleaning machines, Millett LJ in Harrods v Harrodian School [1996] RPC 697 CA is clear that that is not, of itself, enough to amount to a misrepresentation to the public: “What the plaintiff in an action for passing off must prove is not the existence of a common field of activity but likely confusion among the common customers of the parties… In the Lego case Falconer J likewise held that the proximity of the defendant’s field of activity to that of the plaintiff was a factor to be taken into account when deciding whether the defendant’s conduct would cause the necessary confusion”. 151.The Defendants submit that (i) there is no evidence of confusion; (ii) C as a distributor and service provider operates in a different field of activity to D1 as a manufacturer of goods; and (iii) that the ICE Group’s products’ long co-existence in the UK market without complaint from C and without any actual confusion being noted from June 2014 or at the time of the application for D1’s 2015 Trade Marks; militate against a finding that there is a likelihood of confusion. However:i)C submits that the Defendants’ use of the ICE Sign and D1’s ICE Logo between June 2014 and 18 June 2015 was extremely limited, and remained very limited until Killis took over from WCS as distributor of the ICE Group products in 2019, but when considering validity of D1’s 2015 Trade Marks the issue for determination is whether there will be passing off by reason of notional and fair use of the trade marks. Accordingly, C argues, the fact that there is no evidence of actual confusion in 2014 or by 18 June 2015 on the basis of the use actually made of the marks does not mean there would not have been confusion had notional and fair use been made of the marks at the date they were applied for. I accept those submissions;ii)I am satisfied that there was at the relevant date a common or alternatively a very closely associated field of activity between C and D1, namely the sale of floor cleaning machines (as a common field) or C’s sale, rental and servicing/repair of floor cleaning machines and D1’s floor cleaning machine manufacture and sale (as very closely associated fields), which prima facie gives rise to a likelihood of confusion between C’s Sign and C’s Logo with its long-established goodwill arising in part from the retail of floor cleaning machines, and notional and fair use of D1’s 2015 Trade Marks for the machines themselves;iii)I do not agree that at the date of application for D1’s 2015 Trade Marks there was a long co-existence of ICE Group’s products in the market. There were very few sales of product in 2013, 2014 and 2015 and I can only be satisfied that they were marketed and sold in a limited way pursuant to D1’s ICE Sign and D1’s ICE Logo from June 2014.152.I also note that Mr Killi in oral evidence accepted that a consumer who was only aware of one or other company (C or D1) would be confused if they were presented with the brand name or the logo of the other company, because of the similarity in the branding. He said “Well, of course, because the names are the same”. Although his company became a distributor only in 2019, he was an early customer of ICE Group products in the UK from 2014 and so his view does inform me of the likely response of consumers on the relevant date. 153.In all the circumstances, I am satisfied that on the relevant date in 2014 there was a likelihood of confusion amounting to misrepresentation by the notional and fair use of D1’s 2015 Trade Marks for the goods for which they are registered, which would or would be likely to cause a substantial number of the public to believe that D1’s goods were the goods of C or a connected entity.