ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (Intellectual Property)
Mr Roger Wyand QC (sitting as a Deputy High Court Judge)
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE KITCHIN
LORD JUSTICE LLOYD JONES
| Comic Enterprises Ltd
|- and -
|Twentieth Century Fox Film Corporation
for the Claimant/Respondent
Iain Purvis QC and Simon Malynicz (instructed by Simmons & Simmons LLP)
for the Defendant/Appellant
Hearing dates: 3/4/5 November 2015
Crown Copyright ©
Lord Justice Kitchin:
"Live comedy services; night club and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings."
"Songs performed in the programmes, and album compilations thereof, have been sold in the United Kingdom, including via the iTunes Store. There have been two world concert tours, the second of which included performances in the UK at the Manchester Evening News Arena and the O2 Arena. These featured cast members in character performing musical numbers from the TV series. There have also been DVDs of the concert tour. The Defendant has also licensed a range of merchandise, including clothing, linked to the programme and the concert tour and bearing the word glee. This merchandise was sold at the venues."
i) Fox had infringed the Mark under s.10(2)(b) of the 1994 Act;
ii) Fox had infringed the Mark under s.10(3) of the 1994 Act;
iii) Fox was not guilty of passing off.
The legal framework
"(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(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."
"1. The registered 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:
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the 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."
"In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary."
(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."
"… 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."
i) the average consumer is a hypothetical person or, as he has been called, a legal construct; he is a person who has been created to strike the right balance between the various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply;
ii) the average consumer is not a statistical test; the national court must exercise its own judgment in accordance with the principle of proportionality and the principles explained by the Court of Justice to determine the perceptions of the average consumer in any given case in the light of all the circumstances; the test provides the court with a perspective from which to assess the particular question it has to decide;
iii) in a case involving ordinary goods and services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world. A judge may nevertheless decide that it is necessary to have recourse to an expert's opinion or a survey for the purpose of assisting the court to come to a conclusion as to whether there is a likelihood of deception;
iv) the issue of a trade mark's distinctiveness is intimately tied to the scope of the protection to which it is entitled. So, in assessing an allegation of infringement under Article 5(1)(b) of the Directive arising from the use of a similar sign, the court must take into account the distinctiveness of the trade mark, and there will be a greater likelihood of confusion where the trade mark has a highly distinctive character either per se or as a result of the use which has been made of it. It follows that the court must necessarily have regard to the impact of the accused sign on the proportion of consumers to whom the trade mark is particularly distinctive;
v) if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court then it may properly find infringement.
The approach of the deputy judge
"109. First, it is necessary to compare the sign used by the Defendant with the Mark as registered. The sign is the word "glee" in lower case in one colour on a background of another colour. The sign is used in a range of different colours both for the lettering and for the background. Examples of some of the uses given in evidence by Mr Earley are set out below:
110. Visually the lettering is similar but not identical. The words "the" and "club" are not present and neither is the spotlight device. The colours used are not the same as the colours claimed in the representation of the Mark which includes a colour claim but there is frequent use of shades of red on a yellow background. The word "glee" is the most prominent feature in both the Mark and the sign.
111. Conceptually the Mark suggests a club whereas the sign does not. Once you have seen an episode of the Defendant's series you will appreciate that the story is about a club.
112. Aurally the Mark and sign are similar although the Mark will be spoken as The Glee Club whereas the sign will be referred to simply as Glee.
113. The Defendant has used the sign in relation to a number of things, the majority of which are:
i) The television series;
ii) A live show based on the television series;
iii) DVDs of the different episodes of the series;
iv) Merchandise, particularly items of clothing.
114. A picture of the clothing merchandise is set out below and, as can be seen, it also features the word "glee" in lower case in a similar script and in a range of colours:
115. I have come to the conclusion that, objectively, there is similarity between the Mark and sign but that it is not of the highest order…."
"119. From this I deduce that the average consumer in this case is someone who watches the Defendant's TV show and who is aware of the Claimant's business. They will be reasonably well informed and reasonably observant and circumspect. What evidence do I have that will shed any light on the likely reaction of such an average consumer?"
"121. There is one example of a "consumer" of the TV show being already familiar with the Claimant's business, namely Tracey Jones. Her evidence was that she assumed a connection between the TV show and the Claimant's business when she saw a trailer for the TV show. Her evidence was not shaken in cross-examination. She came across as being reasonably well informed and reasonably observant and circumspect. The average consumer is not a real person but is an artificial construct and it would be wrong to equate Tracey Jones with the artificial construct. Nevertheless, her evidence suggested that it was possible that the average consumer might be confused.
122. Tracey Jones was the only witness who gave this sort of evidence and it would be wrong to form a view of the likely reaction of the average consumer on the evidence of this one real individual. The Claimant was fortunate to have obtained the evidence of Tracey Jones. It was fortuitous in that she did not complain but her recollection of her confusion was triggered by seeing a tweet about this action. It would be unlikely for someone in her position to complain. If she had been dissatisfied on seeing the TV show, which she was not, she would, presumably, merely have watched a different programme."
"124. What I have to decide in this case is whether, having regard to the similarity of the Mark and the sign and the similarity of the respective businesses, there is a likelihood of confusion. I believe that this evidence shows that there is such a likelihood. In doing so, it provides support to the Tracey Jones evidence.
125. I believe that this evidence taken as a whole shows that there is a likelihood of confusion and the fact that the Claimant can only produce evidence of one person who was actually confused into believing that the Defendant's TV show was connected with the Claimant's shows does not negate this. Furthermore, this conclusion accords with my own view on seeing the Mark and the sign used on such similar entertainment services. It is not necessary for infringement of a registered trade mark to show that there is "right way round confusion". All that is required is a likelihood of confusion.
126. Mr Malynicz cautions against taking into account this wrong way round confusion. He says that the relevant date that I am concerned with is December 2009/January 2010 when the TV ads and the pilot for the first series were aired. He says that people who give evidence about their reactions when they see the sign after that date when the series has been extremely successful and when they are extremely well aware of it, cannot shed light on whether in December 2009/January 2010, someone who is an average consumer of the registered services would connect the Mark and sign when they encounter the sign when it is used in context. I disagree. It is when the sign has been used on a substantial scale that one will get evidence of the likely reaction of the public. If the Defendant has been using its sign on a large scale for a couple of years and there is no evidence of confusion, I am sure that the Defendant would be relying heavily on that lack of confusion."
Factual irrelevance of the 'wrong way round' confusion.
The failure to consider the lack of 'similarity of services'
The context of use
Irrelevance of 'wrong way round confusion' as a matter of law
"A mere association between the mark and the sign created in the mind of the public will not amount to an infringement unless it also entails deception as to the economic source of the goods bearing the sign."
The average consumer
Distinctiveness of the Mark
Similarity between the Mark and the sign
Similarity between the services
The context of use
The likelihood of confusion
"(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) . . .
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."
"2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State 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 trade mark."
"As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment 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. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so."
"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."
"34. According to the Court's case-law, 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 (Intel Corp, paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment).
35. Admittedly, paragraph 77 of the Intel Corp judgment, which begins with the words '[i]t follows that', immediately follows the assessment of the weakening of the ability to identify and the dispersion of the identity of the earlier mark; it could thus be considered to be merely an explanation of the previous paragraph. However, the same wording, reproduced in paragraph 81 and in the operative part of that judgment, is autonomous. The fact that it appears in the operative part of the judgment makes its importance clear.
36. The wording of the above case-law is explicit. It follows that, without adducing evidence that the condition is met, the detriment or the risk of detriment to the distinctive character of the earlier mark provided for in Article 8(5) of Regulation No 207/2009 cannot be established."
"42. Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions.
43. None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case'."
"40. As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark."
"60. Consequently, it follows from all of the foregoing considerations that the answer to the question referred is that art.5(2) of Directive 89/104 must be interpreted as meaning that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of "due cause" within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:
- how that sign has been accepted by, and what its reputation is with, the relevant public;
- the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and
- the economic and commercial significance of the use for that product of the sign which is similar to that mark."
The approach of the deputy judge
"132. Is the Defendant's use "without due cause"? I have held that the use is likely to cause confusion. If that is so, the use is without due cause. The Defendant argues that the "due cause" defence is "a receptacle for a defence of fair competition" and emphasises that the court should adopt a contextual approach to the comparison of the Mark with the sign as used.
133. I would agree to this approach but I do not believe that it helps the Defendant in this case if the other requirements for infringement are made out. I do not see any objective justification for the Defendant's use of the sign if it causes confusion with the Mark or, even if it does not cause confusion, if it damages the Mark."
"Does the use of the sign cause damage to the distinctive character or repute of the Mark? The evidence establishes that it does. The evidence relating to the reaction of potential customers of the Claimant shows that they are put off attending the Claimant's shows. This will apply generally to people who have not heard of, or at least do not know, the Claimant's business. However, they are clearly potential customers, for instance students at Freshers' Fairs or people being taken by friends. Because of the difference in the underlying theme of the TV show from the Claimant's comedy shows, the Claimant's customers are put off if they think that there is a connection with the TV show."
"140. However, in this case I have more objective evidence of consumers' reaction to the Defendant's activities in the evidence I have referred to above about potential customers being discouraged because they believe that there is a link. That reaction shows that potential customers are changing their economic behaviour and that the Claimant's Mark is suffering detriment through the swamping by the Defendant's use of the sign. I am reinforced in this view by the reaction of the marketing company m360 Limited as described by Sarah Shaw, Mark Ashmore and Shane Robert Jones. From a marketing point of view they saw the Defendant's TV show as being a real threat to the Claimant's Mark which had to be addressed in their marketing programme. It is not necessary for a Claimant under section 10(3) to produce evidence quantifying a change in economic behaviour. All that is needed is objective evidence that there is or will be such a change.
141. The Claimant's case on detriment to the distinctive character and repute of the Mark is made out."
The need for a link
Change in economic behaviour of customers
Without due cause?
"… The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff 's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
The approach of the deputy judge
"147. An essential element of the tort of passing off is that the use of the sign by the Defendant must result in a misrepresentation. I have held above that the Mark and the sign are confusingly similar. However, the only evidence of misrepresentation is that of Tracey Jones. The rest of the evidence is what I have termed "wrong way round" confusion. That is, evidence of people believing that the Claimant's venues are connected with the Defendant's TV show. Whilst it is true that confusion the "right way round" may well never come to the attention of the parties, I am not convinced that such confusion is sufficiently likely to be said to cause damage to the Claimant. The damage suffered by the Claimant is caused by its venues being confused with the Defendant's TV show and its potential customers being put off. That is not passing off."
Lord Justice Lloyd Jones:
Lady Justice Arden: