Claim No: IP-2022-000066 - [2024] EWHC 1369 (IPEC)

The relevant provisions of the Trade Marks Act 1994 for the purposes of the trade mark infringement claims in this case are section 10(1) and section 10(2)(b).

Section 10(1) TMA provides 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.

Section 10(2)(b) TMA provides that a person infringes a registered trade mark if he uses in the course of trade a sign where because the sign is 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.

Likelihood of confusion must be assessed from the perspective of the “average consumer of the relevant goods and/or services, who is deemed to be “reasonably well informed and reasonably observant and circumspect”. The characteristics and role of the average consumer have been discussed in numerous authorities but have been summarised most recently by Arnold LJ in Lidl Great Britain Limited v Tesco Stores Limited [2024] EWCA Civ 262 at [16] – [20].

The manner in which the Court should assess the likelihood of confusion for the purposes of section 10(2) TMA is also well established. They were set out by Kitchin LJ in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41 at [27] – [34], upon which Mr Pearson for the Claimant relies. Ms Watkinson for the Defendants refers me to another recent summary of Arnold LJ in Iconix Luxembourg Holdings Sarl v Dream Pairs Europe Inc [2024] EWCA Civ 29. I do not understand Counsel to have identified any differences in law between them.