[2025] EWHC 1722 (IPEC)

The Claimant alleges that the Defendants have infringed the Wise Logo Mark by using their Signs in relation to goods/services identical or similar to its specification, so as to cause a likelihood of confusion contrary to s 10(2) of the Act. There is a standardised summary of the principles by which the requirement of a likelihood of confusion should be assessed. It is expressed in terms referable to the registration context but applies also to infringement cases, as set out by Arnold LJ in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus LR 1097, at [27]:

“(a)

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

(b)

the matter must be judged through the eyes of the average consumer of the goods or services in question, 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.”

Whilst those principles apply when considering infringement, it is also necessary to consider the actual use of the sign complained of in the context in which it has been used. As Kitchin LJ put it in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, [2012] FSR 19 at [87]:

The context in infringement proceedings under section 10(2)(b) of the Act is “limited to the circumstances characterising [the allegedly infringing] use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion”: see O2 Holdings Ltd v Hutchison 3G UK Ltd (Case C-533/06) [2009] Bus LR 339, para 67. Arnold LJ added in Morley's (Fast Foods) Limited v Thurairasa Nanthakumar & others [2025] EWCA Civ 186:

“29.

As I explained in Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2024] EWCA Civ 814, [2024] FSR 32 at [51]-[58], "context of use" is normally relied upon by defendants as negating a likelihood of confusion in cases where, absent whatever is relied on as constituting the relevant context, the identity or similarity of the mark and the sign and the similarity or identity of the respective goods or services would (in combination with factors such as the distinctive character of the mark) give rise to a likelihood of confusion. As I also explained, it is not clear how far this principle extends outside the special circumstances of comparative advertising.”