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England and Wales Court of Appeal (Civil Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> WHG (International) Ltd & Ors v 32 Red Plc [2012] EWCA Civ 19 (24 January 2012) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2012/19.html Cite as: [2012] ETMR 14, [2012] RPC 19, [2012] EWCA Civ 19 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
MR JUSTICE HENDERSON
HC09C00662
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE ETHERTON
and
LORD JUSTICE KITCHIN
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| WHG (International) Limited (A Gibraltar Company) WHG Trading Limited (A Gibraltar Company) William Hill PLC |
Appellants |
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| - and - |
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| 32 Red Plc (A Gibraltar Company) |
Respondent |
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Mr Michael Silverleaf QC and Mr Tom Moody-Stuart (instructed by McDermott Will & Emery) for the Respondents
Hearing dates : Monday 5th December 2012
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Crown Copyright ©
Lord Justice Etherton:
Introduction
Factual context
The alleged infringing signs
The legal framework
The proceedings
The judgment
"93. The goods and services covered by the Vegas signs are identical, or at any rate virtually identical, to those covered by the Community marks: in each case, the goods and services are those provided by an online casino, and the signs or marks are used to brand the casino. This is an important initial point, because in such circumstances a lesser degree of similarity between the marks may suffice to establish a likelihood of confusion (proposition (g) in the Trade Marks Registry summary).
94. That the Vegas signs are similar to the Community marks is in my judgment undeniable. In both their written and their graphic forms, there is an initial figure 32 followed by a single word (or in the case of the 32v signs, followed by a single letter which in its context plainly alludes to the word "vegas"). The figure 32 does not of itself denote anything to do with online gaming: it is just a number, and not even a number with obviously lucky (or unlucky) connotations, such as 7 or 13. Furthermore, the single word "vegas", like the colour "red", is agreed to have a gaming association. Thus the use by William Hill Online in 2009 of the inherently specific number 32 in conjunction with the single word "vegas", to identify and brand an online casino, clearly satisfied the test of similarity. The critical question, therefore, is whether the similarity was such as to give rise, in all the circumstances, to a likelihood of confusion on the part of the public, including a likelihood of association in the sense of engendering the mistaken belief that the two casinos were operated by the same or economically-linked entities.
95. In answering this question I must look at the matter through the eyes of the average consumer of online gaming services, whom it is convenient to call an "online gambler" for short, while remembering that for many customers the activity is essentially a recreational one, and not all customers play for real money. I must also make due allowance for the fact that the average online gambler will rarely have had the opportunity to make direct comparison between the Community marks and the Vegas signs, and will have had to rely on the imperfect picture of them retained in his mind. It is material to note in this context that the online gambling market is a crowded and volatile one, with a large number of brands competing for customers' attention, and generally very low levels of customer loyalty and retention.
96. I think it is also relevant to have in mind the difference between the marketing models of 32Red and 32Vegas. By January 2009 32Red was a strong brand with an excellent reputation, and from its inception in 2002 it had been promoted alone, not as part of a family of brands in common ownership. By contrast, 32Vegas had always been marketed on the "carousel" model, and as Mr Cole-Johnson frankly acknowledged the reputation of individual casinos was never of any particular importance to William Hill Online, any more (I infer) than it had previously been to Crown Solutions. In these circumstances it seems to me reasonable to conclude that the Community marks are likely to have made a rather stronger and more positive impression on members of the online gambling community than the Vegas signs.
97. The next point I would make is that the Community marks are, and were in 2009, highly distinctive in character. The distinctiveness lay in the combination of the specific number 32 (which in itself has no obvious gambling connotation) with the word or the colour red, which is agreed to have a general gambling connotation. Some, but by no means all, online gamblers will also have picked up the specific allusion to roulette, and will have recognised the marks as making a verbal or visual reference to the result that a croupier would be likely to call out when the ball lands in the 32 slot. This allusion, I would stress, is not directly descriptive of the game of roulette, or of any particular feature of the game; but, for those who recognise it, the allusion gives a much stronger and more specific gaming flavour to the Community marks than the mere use of the word or colour red could do by itself. In a similar way, the red colouring of the script and of the circle in the graphic Community mark reinforces the effect of the word "red", but those who recognise the allusion to roulette may also see the circle as a stylised representation of a roulette ball.
98. I now turn to the Vegas signs. The three text signs all begin, like 32Red, with the figure 32. In two cases this is then followed by the word "vegas" which, because of the obvious allusion to Las Vegas, has a strong (but still general) gambling connotation. In the third case, the single letter "v" will, as I have already said, naturally be read as an abbreviation of "vegas". There is no allusion to roulette or to any other specific game offered by an online casino, and the number 32 has no connection of any kind with Las Vegas. Read or recalled as a whole, the text signs are in my view devoid of any descriptive character beyond the generalised reference to gambling inherent in the word "vegas". The main visual sign is reminiscent of a neon casino sign, and the gaming message is reinforced by the red and gold colouring and the star. The two smaller visual signs focus on the gold 32 and star with the interlocking white "V", and in one case the red background is also similar to that of the main sign; in the other case the background is black, another colour with a generalised gaming connotation (for example the suits of playing cards are either black or red).
99. As a matter of overall impression, the dominant feature of all the Vegas signs is in my view the figure 32. It comes first, whether one is examining the verbal, visual or aural impact of the signs, and in the graphic signs the 32 is notably larger and more brightly coloured than the white "Vegas" or "V". An online gambler would naturally gain the impression, perhaps at a subliminal level, that the "Vegas" component of the signs is in some way subordinate in impact and importance to the "32", although he would also recognise that the "Vegas" is connected with and part of the "32" (a connection visually reinforced by the interlocking of the "2" and the "V").
100. Was there, then, a likelihood of confusion on the part of the average online gambler in 2009 between the Vegas signs and the Community marks? In my judgment there was. It is simplest to begin with the online gambler who did not pick up any allusion to roulette in the Community marks. For such a person, the overall impression created by the Community marks and the Vegas signs would have been very similar: in each case the name of the casino consists of the same number (32) in the dominant position (verbally, visually and aurally), followed by a single word with a general gaming flavour. A natural conclusion to draw would have been that the two casinos were under common ownership or economic control. In addition, the likelihood of an association between the two casinos might well have been reinforced, consciously or unconsciously, by the red background to two of the three graphic Vegas signs, including the main sign where the figure 32 is prominently displayed in gold against a bright red background. The combination of the figure 32 and the colour red could hardly be more striking, and in view of the established reputation of 32Red in 2009 the link to 32Red would have been an obvious and easy one for many online gamblers to make. In a world where stables of thematically-linked online casinos were familiar, there would have been nothing surprising in a burgeoning family of "32" casinos. What would have been surprising, given the highly specific nature of the number 32 and its lack of any intrinsic gambling association, is for two unconnected casino operators to have hit on two such similar names independently.
101. I must now consider those online gamblers, perhaps the majority, who would have picked up an allusion to roulette in the Community marks. For them, the 32Red name and brand will have had a special extra significance, and they may have agreed in substance with Mr Bailey's perception that the name "seemed a clever play on words … it was a breath of fresh air" (paragraph 138 of his report), even if they would not have expressed themselves in quite such enthusiastic terms. But, to return to a point which I have already made, the allusion does not turn the marks into purely, or even partly, descriptive ones. It just gives an added layer of reference, and increases the distinctiveness and memorability of the marks, for those who pick it up. It does not alter the basic form and structure of the marks in any way, nor in my view does it detract significantly from the features discussed above which give rise to a likelihood of confusion with the Vegas signs. The position is, rather, that online gamblers who were alive to the allusion might also have supposed there to be an association between 32Red and another casino which called itself (say) 8Black or 28Even.
102. For these reasons I have come to the conclusion that 32Red's infringement claim under Article 9(1)(b) succeeds in relation to the Community marks, and does so in relation to all of the Vegas signs. .."
"128. … Given the findings which I have already made, the requirements of similarity between the marks, and the existence of a link between them in the mind of the relevant public, are clearly satisfied: see in particular Case C-252/07 Intel Corporation Inc v CPM United Kingdom Limited [2009] Bus LR 1079, [2009] RPC 15, at paragraph 57 of the judgment of the Court. It is equally clear that the Community marks had an established reputation in (at least) the UK. The critical question is therefore whether use by William Hill Online of the Vegas signs took unfair advantage of, or was detrimental to, the distinctive character or the repute of the Community marks. Article 9(1)(c) also includes the words "without due cause", but the onus of establishing any due cause would lie on William Hill Online and it has not attempted to do so.
"129. The decision of the ECJ in Intel was concerned with equivalently worded provisions relating to the registration and invalidity of trademarks in Article 4(4)(a) of Council Directive 89/104/EEC. Both sides accept, and I see no reason to doubt, that the reasoning of the Court is equally applicable to the issue of infringement of Article 9(1)(c) of the CTMR. In paragraph 27 of the judgment, the Court divided the types of injury against which protection is provided into three categories: first, detriment to the distinctive character of the earlier mark; secondly, detriment to the repute of that mark; and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark. It seems to me that the third of those categories could just as well have been expressed as two further categories, making four in all, because unfair advantage may be taken of either the distinctive character or the repute of the earlier mark. The Court then said, in paragraph 28, that any one of the three types of injury is enough for the provision to apply. Indeed, this would seem to follow from the disjunctive manner in which the provision is worded, and again this was common ground between the parties.
130. In paragraph 68 the Court held that the likelihood of one of the types of injury "must be assessed globally, taking into account all factors relevant to the circumstances of the case", including the criteria listed in paragraph 42 of the judgment. Those criteria are:
(a) the degree of similarity between the conflicting marks;
(b) the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
(c) the strength of the earlier mark's reputation:
(d) the degree of the earlier mark's distinctive character, whether inherent or acquired through use; and
(e) the existence of the likelihood of confusion on the part of the public.
131. The Court also had this to say about the first type of injury, namely detriment to the distinctive character of the earlier mark:
"76. Thirdly, as was stated in para 29 of this judgment, detriment to the distinctive character of the earlier mark is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.
77. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.
78. It is immaterial, however, for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark."
It will be seen, therefore, that evidence of a change in economic behaviour is needed in order to establish injury of the first type.
132. Leaving aside the requirement of a change in economic behaviour, it seems to me clear, on a global assessment, that the introduction and use of the Vegas signs was detrimental to the distinctive character of the Community marks, and that the detriment was still continuing during the period of alleged infringement in 2009. The 32Red brand was highly distinctive, and it enjoyed a strong reputation in the online gambling community. The goods and services covered by the Vegas signs were identical, and the degree of similarity between the signs and the Community marks was high, including in particular the initial 32. There was, as I have already found, a likelihood of confusion on the part of the public, and there is some evidence of actual confusion as well. Other uses by third parties of marks including the number 32 were commercially insignificant and not of such a character as to dilute the 32Red brand. The detriment to the distinctive character of the Community marks lay in the risk of a false association with 32Vegas, a brand with an inferior reputation which operated in the same market place.
133. Is there evidence of a change in economic behaviour brought about by the use of the Vegas signs? In the nature of things, direct evidence of such a change is likely to be hard to find in cases of the present type, although Mrs F provides a suggestive example of a customer who was nearly persuaded to change her allegiance as a result of a perceived connection between 32Red and 32Vegas. However, I see no reason why I should not have regard to the inherent probabilities of the situation, and in particular to the contrast between the marketing models of the two casinos. The similarity of their names, and the fact that 32Vegas was always operated as one of a number of linked casinos on the carousel model, lead me to conclude that an average online gambler would have been far readier to switch his allegiance from 32Red to 32Vegas, or to play with 32Vegas in the first place, than he would have been in the absence of such similarity. These are changes in economic behaviour, and I am satisfied on the balance of probabilities that such changes are likely to have occurred to a significant extent.
134. For these short reasons I consider that injury of the first type under Article 9(1)(c) is established, and that 32Red's secondary claim of infringement therefore succeeds. Similar considerations, coupled with the evidence of Mr Brear concerning the unprecedented level of complaints about 32Vegas received by the GRA in 2009, lead me to the same conclusion in relation to injury of the second type, namely detriment to the repute of the Community marks. In these circumstances it is unnecessary for me to consider whether injury of the third type, often referred to as "tarnishing", is also made out, and I prefer to leave the question open."
"139. Applying these principles, it seems clear to me that neither of the Community marks infringed Article 7(1)(c) at the dates when the applications for their registration were made in 2002. The combination "32Red" does not describe or designate any feature or characteristic of the goods or services supplied by an online casino. There is an allusion to a possible result in roulette, but in my judgment that allusion did no more than to create an association with roulette, which was itself no more than one of the games offered by the 32Red casino. Furthermore, the evidence shows that the association is far from obvious and was not picked up by many members of the relevant public. In short, I agree with and accept the submission for 32Red that a mark which can be read as describing a particular result in roulette does not designate a characteristic of the game of roulette, let alone a characteristic of the whole range of goods or services provided by an online casino. Nor, looking at the matter more broadly, can I find any indication of the kind of detriment to the public interest which underpins the absolute grounds in Article 7. It seems to me that the combination "32Red" is inherently distinctive, precisely because it does not describe or designate any part or feature of the business of an online casino. The allusion to roulette gives the mark a gaming flavour, and no doubt helps to make it memorable for that reason; but that is a very different matter from saying that it infringes Article 7(1)(c)."
"140. … The test under this heading is separate from the test under Article 7(1)(c), because although a mark that is descriptive will necessarily also lack distinctive character, the converse is not true: a mark may not be descriptive, but may nevertheless fall foul of Article 7(1)(b) (see the Postkantoor case at paragraph 86). In the present case, however, the considerations which have led me to conclude that there was no breach of Article 7(1)(c) are in my judgment equally applicable to Article 7(1)(b). As the ECJ said in Joined Cases C-53/01 to C-55/01 Linde AG v Deutsches Patent-und Markenamt [2003] R.P.C. 45 at paragraph 40 of the judgment, for a mark to possess distinctive character within the meaning of this provision "it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings". The Court went on to say that the question of distinctiveness must be assessed by reference to the goods or services for which registration is sought, and the perception of consumers of the relevant goods or services. Applying these criteria, I am entirely satisfied that the two Community marks have at all material times functioned as a badge of origin in the online gaming community, and that the combination of "32" and "Red" had from the beginning a clear distinctive character."
"141. … As the ECJ explained in Case C-517/99 Merz & Krell GmbH & Co [2002] E.T.M.R. 231 at paragraphs 32 to 41 of the judgment, the focus of the equivalent provision in Article 3(1)(d) of Council Directive 89/104 is on current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered, and it is for the national court to determine in each case whether the signs or indications which comprise the mark have become customary in the current language or in the bona fide and established practices of the trade to designate the relevant goods or services. It is immaterial, for this purpose, whether the signs or indications are of a descriptive nature. The evidence in the present case comes nowhere near establishing the existence of any such customary usage for either "32" or "Red" in isolation in 2002, let alone for the two of them in combination. The most that can be said is that the colour red, like black or gold, had a gaming connotation; but the word "Red" is not used in isolation in either of the Community marks, and in any event the evidence does not establish that it was used to designate online casino services. The most it could do, in combination with another sign or indication, was to impart a generalised gambling flavour."
"145. Adwords are a familiar feature of life on the internet, and the reaction of the average consumer, when the sponsored link to 32red.com came up on his screen, would I think be one of indifference or irritation, but not of confusion. If the consumer then clicked on the 32Red site, its clear branding could have left no room for reasonable doubt about the identity of the casino whose services were on offer. If the consumer did not click on the site, he will presumably have continued with the search which he originally intended, and is most unlikely to have supposed that there was any business connection between 32Red and the site which he originally sought to access. In a very few cases, the customer may have been grateful for the reminder that there was another online casino called 32Red, but in such cases confirmation or clarification would have been the result, not confusion. I am therefore wholly unpersuaded that the effect of 32Red's adword campaign was to mislead the public.
146. Even if that is wrong, the evidence indicates that the campaign has been too insignificant in extent to generate any significant degree of confusion. Mr Ware's evidence is that bidding on 32royal as an adword has not resulted in a single user clicking on the 32Red advertisement. Bidding on Spin32 has resulted in only 8 users clicking on the 32Red advertisement, yielding a fee to Google of £13.70. None of those users subsequently signed up as a member. Bidding on 32Vegas as an adword resulted in a total of 251 users clicking on the 32Red advertisement, at a cost to 32Red of £884.04. Of those users, 20 signed up as members of the 32Red site, and 10 of them played for real money, generating a "gross win" of £1,795.44. Furthermore, the total number of "impressions" generated by the campaign, that is to say the number of occasions when the 32Red advertisement was published alongside the search results for the adword, has been very modest. Over a period of some 20 months the total number of impressions for adwords including "32Vegas" in various combinations was about 22,500. Not only is this a relatively small number, but it can also be seen that only a tiny proportion of the customers to whom the 32Red advertisement was displayed in this way actually then chose to click on it."
"(a) The number 32 is a possible bet or result in roulette. That is true, but it does not deprive the number of distinctive character. The number 32 is not descriptive of any characteristic of casino gaming, and I agree with the submission for 32Red that the proposition can be tested by asking whether there is any question to which the answer "a 32 casino", "a 32 game" or "a 32 kind of service" would have any meaning in respect of the casino, gaming or gambling services for which the UK mark is registered.
(b) 32 is a gamblers' lucky number. There is no evidence to support this. …
(c) The number 32 was commonly used as part of the name for gaming services prior to the application date in February 2009. However, there is no evidence that the number 32 was ever used alone to designate such services, and Mr Cole-Johnson accepted in cross-examination that the list of domain names found for him by William Hill Online's solicitors and set out in his written evidence were all for one reason or another commercially insignificant, in the sense that Mr Cole-Johnson would not recognise them as competitors.
(d) The use of the sign 32Vegas by William Hill Online. There is no evidence of use by William Hill Online of the sign 32 alone, and the use of the infringing sign 32Vegas up to February 2009, although admittedly extensive, was in my view insufficient in itself to render the mark 32 devoid of distinctive character. The problem was that this use suggested a connection between 32Vegas and 32Red, not that it somehow made the figure 32 alone common currency in the world of online gambling.
"71. Apart from the connection with roulette, the colour red, like black and gold, is commonly used for online casino brands. Numbers are also popular, but 32 has no special gambling connotation. In an interview with Casinomeister in October 2002 Mr Ware told Mr Bailey that "32Red is one of the most popular numbers in a brick and mortar casino (if 32Red has come up several times during the evening, the manager knows they will have less money to count than usual!)." Since that date, this statement has featured prominently on Casinomeister's website; but Mr Ware explained in his oral evidence that he never intended it to be taken seriously, and he had no grounds for saying that 32 is a lucky number in roulette. There is no evidence before me that 32 has any reputation as a lucky number, in roulette or any other game, and I am satisfied that Mr Ware's statement to Mr Bailey was indeed no more than a promotional ploy."
"(1) It is to be inferred that, in applying to register "32", the Claimant intended to prevent other traders in the market place from using the number 32 and therefore from trading or from entering the market for the supply of casino and gaming services and similar.
(2) Further, the Claimant could not objectively have thought that a roll on the roulette wheel had come to denote its casino and gaming services. Accordingly, it is to be inferred that the application was made without a genuine belief that the mark was properly a trade mark.
(3) Further, or in the alternative, the Claimant had no genuine intention at the date of application for the mark to use [the UK mark] in respect of all goods and services for which registration was sought."
"159. Looking at the matter in the round, I do not consider that 32Red's application to register the UK mark was made in bad faith. I have little doubt that the application was made with a view to strengthening 32Red's position in the forthcoming litigation against William Hill Online, and with a view to obtaining a monopoly for online casinos and related services under the 32 mark. But considerations of this nature are not necessarily indicative of bad faith, as the ECJ was at pains to stress in Lindt (see in particular paragraphs 47 to 49) and as Arnold J recognised at the conclusion of his discussion in Cipriani:
"189. In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trademark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use of the mark, he may still believe that he is entitled to registration …
190. Nor in my judgment does it amount to bad faith if what the applicant seeks to register is not the actual trade mark he himself uses but merely the distinctive part of his trade mark, the other part of which is descriptive or otherwise non-distinctive, and third parties are also using the distinctive part with different non-distinctive elements. It is commonplace for applicants to apply to register the distinctive elements of their trade marks, and with good reason …"
In my view the application for registration of the UK mark was made for good tactical reasons of this nature, in a context where 32Red believed (with justice, as I have held) that the use by William Hill Online of the Vegas signs infringed the Community marks, and where no commercially significant use had been made by anybody else of marks incorporating the figure 32, let alone the figure 32 in isolation, in the field of online gambling.
160. What I have said so far is mainly directed at the first of the pleaded particulars of bad faith. The second of the particulars is based on the fallacy that the figure 32 denotes "a roll on the roulette wheel", and therefore cannot be properly registered as a trade mark. This contention adds nothing to the case under section 3(1)(b) to (d), which I have already rejected. That leaves the third of the particulars, namely lack of any genuine intention to use the UK mark. It is clear, I think, that 32Red had not by February 2009 made any use of the figure 32 in isolation to designate its online casino, and that promotional offers of, for example, 32 free chips for new players were always accompanied by the name 32Red. Moreover, the use of the figure 32 in a broken circle as a sort of bullet point would naturally be understood by users as an abbreviation or part of the 32Red graphic sign; and the same goes, in my view, for the use of a similar sign as a computer-screen icon. In each case the user will make an immediate, and probably subconscious, connection in his mind with 32Red. Nevertheless, I see no reason to doubt that such uses of the figure 32 may in due course provide a springboard for increasing use of the figure 32 alone, and having heard Mr Ware give evidence I am not prepared to find that 32Red had no genuine intention to use the UK mark. As he said in response to a question in cross-examination.
"It is more that people refer to us as 32, I have to say, but we see that very much as part and parcel of our identity."
I also bear in mind that an allegation of bad faith is a serious one which must be distinctly proved, and that a person is presumed to have acted in good faith unless the contrary is established (see Cipriani at paragraph 177)."
"161. … As counsel for William Hill Online made clear in their written submissions, the "act" relied on is the adword campaign, and the "inactivity" relied on is the alleged failure by 32Red to take steps to prevent others from using "32" signs in relation to casino services. I have already explained why the adword campaign did not in my view create confusion or turn the 32 sign into common currency. I am equally satisfied that the figure 32 has never become the common name in the trade for online casino services, whether or not 32Red could have tried harder than it did to stamp out instances of apparent infringement."
"165. The critical distinction from the position with the Community marks is that 32Red had not by the end of July 2009 (and so far as I am aware still has not) made any, or any significant, use of the 32 mark in isolation. Such uses as it did make of the figure 32 would in my view all have been naturally understood in their context as alluding to, or as truncated versions of, one or other of the Community marks. In these circumstances, I am satisfied that 32Red had not yet acquired any separate reputation in the 32 mark, so for that reason alone the claim for infringement under section 10(3) must fail. For the same reason, it also seems to me that there cannot have been any likelihood of confusion under section 10(2), because in the absence of any separate use of the 32 mark to distinguish the services offered by 32Red and act as a badge of their origin there can have been no factual basis for the alleged confusion. I can well understand that there was a possibility of confusion in the future, if and when 32Red made significant independent use of the 32 mark; but focussing, as I must, on the position in June and July 2009, I am not satisfied that the claim for infringement under section 10(2) is made out."
The appeal
Respondent's notices
Discussion
"97. It is not necessary that the signs and indications composing the mark that are referred to in article 3(I)(c) of the Directive actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that those signs and indications could be used for such purposes. A word must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned: see to that effect, in relation to the identical provisions of artic 7(I)(c) of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark, Office for Harmonisation in the Internal Market (Trade Marks and Designs) v Wm Wrigley Jr Co (Case C-191/01P) [2004] I WLR 1728, 1751 -1752, para 32."
"25. It is therefore necessary to determine whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, will, without any additional information, perceive in the sign "1000" a description of one of the characteristics of the goods covered by the applications for registration.
26. In that regard, it should be noted that, as is apparent from paragraphs 18 and 19 of the contested decision, there is from the point of view of the relevant public a direct and specific link between the sign "1000" and some of the characteristics of the goods concerned. The sign "1000" alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them. That conclusion cannot be invalidated by the fact that the mark applied for is composed only of figures, since… the missing information may be readily identified by the relevant public, the association between the figure and those characteristics of the goods in question being immediate.
27. In particular, as the Board of Appeal stated in paragraphs 18 and 19 of the contested decision, brochures, periodicals and magazines frequently publish ranking lists and collections, with the preference then being for round numbers in order to indicate content, the Board of Appeal referring in particular in that regard to the example of the publication "1000 Fragen und Antworten" ("1000 Questions and Answers"). This strengthens the descriptive relationship that exists from the point of view of the average consumer between the goods in question and [sign "1000"]
.….
30. Since it has been established that the [sign "1000"] is descriptive of the goods covered by the application for registration, it is necessary to examine whether the mark applied for consists exclusively to descriptive signs and whether it contains other elements which may negate the finding that it is descriptive … In the present case, the word sign 1000 does not contain any element distinguishing it from the usual way of indicating a quantity that would be capable of negating its descriptive character.
31. It follows from all of the foregoing that the word sign "1000" designates characteristics of the goods concerned, in particular the number of pages and works, amount of data, and the number of puzzles in a collection, or their ranking, which the target public is liable to take into account when choosing and which are therefore essential characteristics of the goods…."
"50. The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee, paragraph 31, and Koninklijke KPN Nederland, paragraph 56).
51. Those specific points are of particular relevance as regards signs which are composed exclusively of numerals.
52. Given that such signs are generally equated with numbers, one of the things that they can do, in trade, is to designate a quantity. Nevertheless, in order for a sign which is composed exclusively of numerals to be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 on the ground that is designates a quantity, it must be reasonable to believe that, in the mind of the relevant class of persons, the quantity indicated by those numerals characterises the goods or services in respect of which registration is sought.
53. As is apparent from paragraph 26 et seq. of the judgment under appeal the General Court based its decision on the fact that the sign 1000 can indicate the number of pages in the goods covered by the application for registration and on the fact that ranking lists and collections of data and puzzles – in respect of which there is a preference for the content to be indicated by one or more words coupled with round numbers – are frequently published in those goods.
54. Without it being necessary to determine whether each of those factors supported the inference that the number 1000 characterises the goods referred to in the application for registration, the fact remains that, at the very least, the finding made by the General Court, to the effect that the sign '1000' is descriptive in relation to the collections of puzzles contained in those goods, is not incompatible with the specific points made above regarding the scope of Article 7(1) (c) of Regulation No 40/94.
55. As is apparent from paragraphs 26 and 27 of the judgment under appeal and from the extracts from the contested decision to which those paragraphs refer, the Fourth Board of Appeal of OHIM and the General Court found that Technopol had applied for the sign '1000' to be registered, inter alia, in respect of 'periodicals, including periodicals containing crossword puzzles'. They also found that there are many goods of that kind on the market and that the number of points of information contained in those goods can generally be expressed in round numbers. According to the find which the Board of Appeal made in paragraph 19 of the contested decision and to which the General Court essential referred in paragraphs 26 and 27 of the judgment under appeal, the sign '1000' on a publication of that kind will be perceived as an indication that it contains 1000 crossword puzzles."
"(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;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
"The critical question, therefore, is whether the similarity was such as to give rise, in all the circumstances, to a likelihood of confusion on the part of the public, including a likelihood of association in the sense of engendering the mistaken belief that the two casinos were operated by the same or economically-linked entities."
Conclusion
Article 7
Absolute grounds for refusal
1. The following shall not be registered:
…
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
…
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it."
Article 9
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
Article 12
Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
…
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
…
provided he uses them in accordance with honest practices in industrial or commercial matters."
Article 51
Grounds for revocation
1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
…
(c) if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
…"
Article 52
Absolute grounds for invalidity
1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where the Community trade mark has been registered contrary to the provisions of Article 7;
…
2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered."
1 Trade marks.
(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."
3 Absolute grounds for refusal of registration.
(1) The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
…
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith."
10 Infringement of registered trade mark.
(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, or
(b) 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 a sign which—
(a) is identical with or similar to the trade mark, and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
Lord Justice Kitchin
Lord Justice Toulson
