Case No. IP-2021-000046

17.Section 10 TMA provides:(1)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. (2)A person infringes a registered trade mark if he uses in the course of trade a sign where because – a.The sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, orb.The sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, There exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.(3)A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which – a.Is identical with or similar to the trade mark,b.c.Where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes advantage of or is detrimental to the distinctive character or the repute of the trade mark. (3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered. …(4)For the purposes of this section a person uses a sign if, in particular, he a.Affixes it to goods or the packaging thereof;b.Offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;c.Imports or exports goods under the sign; ord.Uses the sign as a trade or company name or part of a trade or company name;e.Uses the sign on business papers and in advertising; orf.Uses the sign in comparative advertising in a manner that is contrary to the Business Protection from Misleading Marketing Regulations 2008.18.Kitchen LJ provided guidance with regard to the approach to assessing infringement under s10(2) TMA at [52] of Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24. This guidance is very well known, and I will not set it out here, but I will keep those principles in mind when carrying out that assessment. Kitchen LJ also summarised the six conditions necessary for infringement under Article 5(1)(b) of the Directive, which was implemented into the UK by section 10(2) TMA, at [28] of Comic Enterprises v Twentieth Century Fox Film Corp [2016] EWCA Civ 41 and the nine conditions necessary for the court to be satisfied of section 10(3) infringement at [111] of that case. I will come back to those when considering infringement.19.“Confusion” for the purposes of infringement, can arise in different ways. These include concepts usually referred to as ‘direct confusion’, ‘indirect confusion’ and ‘wrong way round confusion’ which were described by Arnold LJ recently in Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] ETMR 57 as follows at paras [10] to [14]:[10] It is well established that there are two main kinds of confusion which trade mark law aims to protect a trade mark proprietor against… The first, often described as “direct confusion”, is where consumers mistake the sign complained of for the trade mark. The second, often described as “indirect confusion”, is where the consumers do not mistake the sign for the trade mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the trade mark or from an undertaking which is economically linked to the undertaking responsible for goods or services denoted by the trade mark.…[14] “Likelihood of confusion” usually refers to the situations described in paragraph 10 above. As this Court held in Comic Enterprises, however, it also embraces situations where consumers believe that goods or services denoted by the trade mark come from the same undertaking as goods or services denoted by the sign or an economically linked undertaking (sometimes referred to as “wrong way round confusion”).20.Section 11(1) TMA provides:(1)A registered trade mark is not infringed by the use of a later registered trade mark where that later registered trade mark would not be declared invalid pursuant to section 47(2A) or (2G) or section 48(1).21.S11A TMA was repealed by the Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/269, reg 4, Sch3, paras 1, 7(1), (2), subject to transitional and savings provisions in Sch 5, para 7 to the 2019 Regulations, which states:“(1)Any application or proceeding under the 1994 Act which was made or commenced before the coming into force of these Regulations shall be dealt with under the 1994 Act as it had effect before regulation 4 came into force. (2)The repeal of section 52 of the 1994 Act (Power to make provision in connection with European Union Trade Mark Regulation) does not affect any proceedings which are pending on the coming into force of these Regulations before the EU trade mark courts designated by regulation 12 of the Community Trade Mark Regulations 2006 insofar as such proceedings relate to the application and enforcement of a European Union trade mark in the United Kingdom.”