Claim No: IP-2022-000076 - [2024] EWHC 88 (IPEC)
Intellectual Property Enterprise Court

Claim No: IP-2022-000076 - [2024] EWHC 88 (IPEC)

Fecha: 24-Ene-2024

Section 10(2) (b) TMA infringement

Section 10(2)(b) TMA infringement

63.

The six requirements for infringement under section 10(2)(b) were stated by Arnold J (as he then was) in Sky v SkyKick [2018] EWHC 155 (Ch) at [285] (from Comic Enterprises v Twentieth Century Fox Film Corp [2016] EWCA Civ 41 ): (a) there must be use of a sign by a third party within the UK; (b) the use must be in the course of trade; (c) it must be without the consent of the proprietor of the trade mark; (d) it must be of a sign which is at least similar to the trade mark; (e) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (f) it must give rise to a likelihood of confusion on the part of the public. My finding that the sign complained of by Thatchers is the whole appearance of a single can of Aldi Product means there is no remaining dispute in relation to (a). There is no dispute that (b), (c) and (e) are satisfied. The areas of dispute for my determination are therefore whether the Sign is at least similar to the Trade Mark, and whether use of the Sign gives rise to a likelihood of confusion on the part of the public.

64.

In relation to likelihood of confusion, Kitchin LJ (as he then was) said at [87] of Comic Enterprises that “in assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context”.

65.

“Confusion” for the purposes of section 10(2)(b) 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 [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”).

66.

Kitchin LJ’s summary of key principles to be applied when assessing the likelihood of confusion at [52] of Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] F.S.R. 19 are as follows:

a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

b)

this must be judged through the eyes of the average consumer of the goods 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; and

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.

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