England and Wales Court of Appeal (Civil Division) Decisions

Premier Luggage and Bags Ltd. v The Premier Company (UK) Ltd. & Anor [2002] EWCA Civ 387 (26th March, 2002)

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
(Mr Terence Etherton QC)

		Royal Courts of Justice Strand, London, WC2A 2LL
		26 March 2002

Lord Justice Chadwick :

1. This is an appeal and cross-appeal from an order made on 12 July 2000 by Mr Terence Etherton QC sitting as a Deputy Judge of the High Court in the Chancery Division in passing-off and trade mark infringement proceedings brought by Premier Luggage and Bags Limited (“Premier Luggage”) against The Premier Company (UK) Limited (“Premier UK”) and Mr Vinod Mahtani, the managing director of Premier UK. The judge held that Premier Luggage had made out its claims against Premier UK, both in passing-off and for infringement, and granted restraining orders. Premier UK appeals from those orders with the permission of the judge The judge refused to hold that Mr Mahtani was liable as a joint tort-feasor and dismissed the claim against him. Premier Luggage appeals from that part of his order.

The underlying facts

2. Premier Luggage was formed or acquired in 1985 to carry on the business of supplier of luggage and travel goods formerly carried on by Mr David Wieder under the trading name “Premier Supplies”. The company imports luggage and travel goods from the Far East for sale to wholesalers, and to market traders and other small independent retailers, in the United Kingdom. Between 1990 and 1998 it sold goods having an aggregate wholesale value of £15 million or thereabouts. It has an annual turnover of about £2 million, at wholesale values. The company has, from the commencement of its trading in 1985, used “Premier” as a brand name; in the sense that that name appears on most of the products which it supplies. As the judge found: “Depending on the product in question, the word appears variously on metal logos, PVC logo patches, swing tags, zip pullers, and may be printed, embossed or embroidered on the product’s material or lining”. Premier Luggage is the proprietor of the registered trade mark No 2,123,966 “PREMIER” in respect of “suitcases, trolley cases, school bags, back packs, shopping bags, casuals, holdalls, light bags, sports bags, wallets, bum bags, kiddie bags and attaché cases” within Class 18. Registration of that mark under the Trade Marks Act 1994 took effect from the application date, 18 February 1997.
3. Premier UK was acquired by Mr Mahtani and others in April 1996. Before that date it had been a dormant subsidiary of Premier plc, a company owned or controlled by Mr Mahtani’s family. The Mahtani family have carried on business in the United Kingdom since the mid-1980’s through another subsidiary of Premier plc, Premier Decorations Limited (“Premier Decorations”). Premier Decorations imports and distributes Christmas decorations, Halloween costumes and accessories and garden tools and barbecues under the brand name “Premier”. It does so through sales to major national retailers – amongst which are such household names as Homebase Limited, Safeway Stores Plc, CWS Limited, Focus Do It All Limited and Asda. Premier Decorations has a substantial business, with approximately 4,500 product lines and an annual turnover which had increased from £8 million in 1994 to £18 million in 1999.
4. Mr Mahtani’s purpose, in acquiring Premier UK, was to use that company as a vehicle for the importation of luggage and travel goods for sale to the national retailers who were existing customers of Premier Decorations; so taking advantage (with its consent) of the established connections and reputation of the family company. To that end Premier plc obtained registration of the trade mark “pcl” under the 1994 Act, in respect of luggage, bags, travel bags, suitcases and belts within Class 18. Registration took effect from 14 November 1996. Premier UK began to trade at the end of 1996, using the mark pcl under licence from Premier plc. Management services and administrative support – including the booking and processing of orders, credit control, accountancy and warehousing - are provided to Premier UK by Premier Decorations under a management agreement. Premier Decorations also provides office, showroom and storage space at its premises at Premier House, in Ruislip. It is accepted that the luggage and travel goods business of Premier UK was built up through the relationship between Premier Decorations sales staff and their contacts in the retail sector; and that – in that context – the salesman would be likely to introduce himself as “from Premier”, that being the name by which Premier Decorations was known to its customers.
5. The judge found that orders for luggage began to be received by Premier Decorations on behalf of Premier UK in November or December 1996. The first price list in respect of goods supplied by Premier UK is dated December 1996. Many of the Premier UK products were and are similar in style to the products of Premier Luggage. Premier UK products have always carried a pcl logo; as have its brochures and stationery (other than its initial letter paper). The swing tags on its products (other than those printed in error since 1999), as well as its brochures and its stationery, have also carried the full name “The Premier Company (UK) Limited”.
6. The entry of Premier UK into the luggage trade came to the attention of Mr Wieder and Premier Luggage at a trade fair in February 1997. Mr Wieder instructed trade mark agents. On 13 February 1997 those agents wrote to Premier UK. The letter contained the following assertions:

“Your recent commencement of sales of luggage and leather goods has already caused several individual cases of confusion details of which have been noted by our clients. Whilst we understand that you do not label the goods you sell with the word ‘PREMIER’ but instead use the trade mark ‘P.C.L’ it is clear that confusion has occurred and is likely to occur in the future. . . .

We consider your entry into the market in luggage and baggage to be an attempt to pass off your goods [as] those of our clients and we require that within fourteen days of the date of this letter you confirm in writing that you will immediately cease trading in luggage under the name The Premier Trading Company (UK) Limited or indeed any other name including the word PREMIER.”

The trade mark application

7. Shortly thereafter, on 18 February 1997, Premier Luggage applied for registration of PREMIER as a trade mark under the 1994 Act. The application was supported by a statutory declaration, made by Mr Wieder on 13 August 1997. That statutory declaration contains the assertion that the trade mark PREMIER is distinctive of the goods sold by Premier Luggage in respect of which the application for registration was made and “is very well known in the trade as identifying the goods sold by my company”. In the Trade Marks Journal (No 6207) the application was noted as “Proceeding because of distinctiveness acquired through use and trade evidence”. The application was successful; and a registration certificate was issued on 24 April 1998.

These proceedings

8. The issue of a registration certificate was followed, shortly thereafter, by a letter dated 19 May 1998 from solicitors instructed by Premier Luggage asserting trade mark infringement. That letter contained the assertion that the use by Premier UK of the Premier name leads to “the inevitable conclusion that such use is no more than a cynical attempt to use our client’s established Mark as a spring board into this previously untested market”; and the further assertion that “Given the difference in quality between the materials used by your company and our client to produce their respective goods, our client’s reputation is bound to suffer”. The letter called for undertakings, for delivery up of all swing tickets, catalogues and promotional literature which infringed the mark, and for a full list of customers by 26 May 1998; without which proceedings would ensue. It was thought appropriate in that letter to warn Mr Mahtani, as managing director of Premier UK, of the criminal penalties (including imprisonment) that might follow conviction for an offence under section 92 of the Trade Marks Act 1994.
9. These proceedings were commenced in September 1998. The primary claim was to restrain Premier UK and Mr Mahtani from passing off goods or a business (not being the goods or business of the claimant) as and for the claimant’s goods or business by the use in relation thereto of the name The Premier Company (UK) Limited or any other name including the word “Premier”; and from infringing the PREMIER mark. As pleaded, the two claims are closely linked. It is said, in paragraph 8 of the statement of claim, that the defendant’s use of its company name in such a manner as to amount to passing off is not in accordance with honest practices in commercial matters and is accordingly an infringement of the plaintiff’s trade mark. The defence, served in November 1998, denied both passing-off and infringement of the trade mark. In particular it was denied that the word “Premier”, used as part of the name of Premier UK, was reasonably capable of being construed either by members of the trade or the public as a material indication of trade origin or business connection. By counterclaim, added by amendment in February 2000, the defendants sought a declaration that the registration of PREMIER as a trade mark was invalid; and an order for rectification of the register. There was also a claim, by way of counterclaim, for damages in respect of the threat of proceedings contained in the letter of 19 May 1998; and in respect of a threat of proceedings made in a letter dated 11 December 1999 to QVC The Shopping Channel.

The Trade Marks Act 1994

10. The Trade Marks Act 1994, as appears from its long title, was enacted for the purpose of implementing Council Directive No 89/104/EEC of 21 December 1988. The Act is to be construed with that purpose in mind. In particular, it is to be kept in mind that the function of a registered trade mark, as appears from the tenth recital to the Directive, is “to guarantee the trade mark as an indication of origin”. The point was recognised in the decision of this Court in Bach and Bach Flower Remedies Trade Marks [2000] RPC 513 – see paragraph 8 (at page 517) in the judgment of Lord Justice Morritt.
11. Section 1(1) of the 1994 Act defines a trade mark, for the purposes of the Act, as any sign capable of being represented graphically “which is capable of distinguishing goods or services of one undertaking from those of other undertakings”. Section 3(1) sets out “absolute grounds for refusal of registration”. It is in these terms:

“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 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.”

12. Section 47(1) of the 1994 Act provides that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 (absolute grounds for refusal of registration); but, where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall 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.
13. Section 9 of the 1994 Act confers on the proprietor of a registered trade mark exclusive rights in the mark, which are infringed by the use of the mark in the United Kingdom without his consent. The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10. Section 10(1) provides that a person infringes a 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) is in these terms:

“A person infringes a registered trade mark if he uses in the course of trade a sign where, because –

(a) . . . , or

(b) the sign is similar to the trade mark and is used in relation to goods or services 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.”

But section 11 imposes limits on the effect of registration. In particular section 11(2) provides that:

“A registered trade mark is not infringed by –

(a) the use by a person of his own name or address,

(b) the use of indications concerning 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, or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters”.

The judge’s findings of fact

14. In support of their contention that the registration of the mark PREMIER was invalid, the defendants relied, at trial, on paragraphs (1)(a), (b) and (c) of section 3 of the 1994 Act; that is to say, they sought to persuade the judge (a) that “Premier” was not a word which was capable of being distinctive of origin, or (b) that, even if capable of being distinctive of origin, the word was, in fact, devoid of distinctive character, or (c) that the word served, in trade, only to designate the kind, quality or other characteristics of goods. The judge rejected the contention that the word was incapable of being distinctive of origin – sections 1(1) and 3(1)(a) of the Act. He held, in relation to section 3(1)(b), that the word was devoid of any inherent distinctive character; and, in relation to section 3(1)(c), that the word was apt to serve, in trade, as a designation of the quality of goods. But he held that the word had acquired a distinctive character through use in connection with the claimant’s goods.
15. Before examining the evidence the judge referred to the observations of Mr Justice Jacob in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, at page 302 (lines 42-47), at page 305 (lines 1-19) and at page 306 (lines 18-44). But he accepted that Mr Justice Jacob’s approach in the British Sugar case required re-consideration in the light of the decisions of the Court of Justice in Windsurfing Chiemsee Produktions v Huber and Attenberger (Joined Cases C-108/97 and C-109/97) [1999] ETMR 585 and Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97) [2000] FSR 77. He set out the following passages from the Court’s judgment in Windsurfing Chiemsee:

“49. In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.

. . .

51. In assessing the distinctive character of a mark in respect of which registration has been applied for, the following [in addition to the specific nature of the geographical name in question in that case] may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

52. If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in Article 3(3) of the Directive [from which the proviso to section 3(1) of the 1994 Act is derived] is satisfied. However, the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages.”

The judge directed himself, at paragraph 24 of his judgment, that he must follow the guidance given by the Court of Justice in those passages. He said this:

“I must consider whether the evidence establishes that the relevant class of persons, or at least a significant proportion of them, identify luggage as originating from the Claimant in consequence of the PREMIER trade mark. In fulfilling that task, I am not bound to apply predetermined percentages, such as those mentioned in the British Sugar case, but I am to take into account the various matters mentioned in paragraph 51 of the Windsurfing Chiemsee case.”

16. It was on that basis that the judge approached the question whether the word “Premier” had acquired a distinctive character through use in connection with the luggage and travel goods supplied by Premier Luggage; or, to put the point in the words used by the Court of Justice has “the mark come to identify the product as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings”.
17. The judge rejected the attack made by Mr Baldwin QC, counsel for Premier UK, on the reliability of the evidence given by Mr Wieder and the other witnesses called by Premier Luggage. That attack has been renewed on this appeal. It is important, therefore to note what the judge said, at paragraph 26 of his judgment:

“Generally, I find that Mr Wieder was a patently honest witness, as indeed were all the other witnesses who gave evidence on the Claimant’s behalf. I am satisfied that, although Mr Wieder or his staff prepared the witness statements for approval and signature of the Claimant’s witnesses, there was nothing sinister about this arrangement. I am satisfied that the witness statements reflect the true evidence of the Claimant’s witnesses and that the witnesses have not been induced in any way to sign them believing they are inaccurate in any respect.”

18. In addition to the oral evidence of Mr Wieder (which he accepted) the judge heard evidence - which he described as particularly useful on the question of the reputation of the PREMIER brand - from Mr A I Davis, the owner of luggage shops in Sussex and Surrey. His evidence was that his customers made further purchases of PREMIER brand luggage for two main reasons: first, in order to make up matching sets of luggage; and, secondly (and pertinently in this context) because “having had experience with a particularly reliable brand, they would ask for more of the same kind”. Mr Davis told the judge that “anyone with any experience of the trade would have heard of PREMIER luggage”.
19. The judge heard oral evidence from two other retail shop-keepers – Mr Sear (the owner of two shops in Mablethorpe, Lincolnshire) and Mr Shafier (the owner of a shop in Shepherd’s Bush) - from Mr Walsh (who has a cash and carry shop in Birmingham, selling only to the trade), and from three wholesalers – Mr Drake, Mrs Jeans and Mr David Davis. He also heard evidence from Mr Nicholas Long, who had been in the luggage industry as retailer, manufacturer and importer for over forty years and who was a past chairman of the British Luggage and Leather Goods Association. The judge described his evidence as particularly important. Mr Long told the judge that Premier Luggage was highly respected in the luggage industry and had built up an admirable reputation for the PREMIER brand offering quality and value for money products. He said that professional buyers in any of the major retailers of luggage and travel goods would know of Premier Luggage.
20. Taking the evidence that he had heard from the witnesses called by Premier Luggage with that from Mr Mahtani and the witnesses called by Premier UK “as a whole” the judge reached the conclusion, set out in paragraph 43 of his judgment, that Premier Luggage had established “that its PREMIER mark and brand have a distinctiveness and a reputation throughout the retail and wholesale trade in luggage over the entire country”. He went on to say this:

“Specifically, I reject the submission made on behalf of the First Defendant that the Claimant’s PREMIER mark has acquired a distinctive character only among a few wholesalers and retailers. I also find that the Claimant has achieved a reputation for reliability and good value amongst trade buyers. I reject the submission, and the evidence of Mr Mahtani and Mr Perry [formerly a senior buyer for Co-operative Retail Services], to the effect that the PREMIER brand is worthless as an aid to the sale of the [Claimant’s] products, and that trade customers are concerned only with price and style in relation to the type of luggage sold by the Claimant. Reliability is, in my assessment of the evidence, a critical matter. So far as concerns the public, that is to say the ultimate consumer, the Claimant’s PREMIER brand is not widely known, and does not have the general reputation of the kind enjoyed by such well-known brands as Antler, Delsey and Carlton. On the other hand as Mr Micklethwait [counsel for Premier Luggage] pointed out, the Claimant’s turnover figures show that over the past ten years the Claimant has supplied vast quantities of luggage to the public. It is clear that, amongst certain members of the public, the PREMIER brand enjoys a high reputation for reliability, quality and value for money. The evidence also shows that members of the public will purchase goods of the same brand in order to make up matching sets or to replace damaged luggage.”

21. The judge was concerned as to whether “the relevant class of persons”, for the purposes of the test posed by the Court of Justice in paragraph 52 of its judgment in the Windsurfing Chiemsee case, was confined, in a case like the present (where the supplier does not sell direct to the public), to wholesalers and retailers, or included the ultimate consumer. He resolved that question at paragraph 47 of his judgment:

“It seems to me that I am bound to follow the decision and reasoning of the Court of Appeal in the Bach Flower case. I do not consider that in the present case, which concerns the situation in which retailers and wholesalers are themselves purchasers or intermediate purchasers of the Claimant’s goods, this requires me to ignore wholesalers and retailers completely. It does, however, require me, for the purposes of the proviso to section 3(1) of the 1994 Act, to treat ultimate consumers as part of the relevant class of persons who, or a substantial proportion of whom, because of the PREMIER mark, must identify the Claimant’s goods as originating from the Claimant.”

At paragraph 48, he directed himself that he must be satisfied that:

“. . . the class comprising retailers, wholesalers and ultimate consumers, or at least a significant proportion of them, identify luggage as originating from the Claimant in consequence of the PREMIER mark.”

He held that that requirement had been met. At paragraph 49 of his judgment he said this:

“Applying . . . the test . . . laid down by the European Court of Justice in the Windsurfing Chiemsee case, and the average consumer test applied in the Bach Flower case, I consider that the evidence is sufficient to bring the Claimant within the proviso to section 3(1) of the 1994 Act. Accordingly I hold that the Plaintiffs mark PREMIER was properly registered.”

He dismissed the counterclaim.

22. The judge’s conclusion that the mark had acquired a distinctive character through use in connection with the claimant’s goods – so that the registration under the 1994 Act was not to be held invalid - made it necessary for him to address the issue of infringement. In particular, he had to address the likelihood of confusion, for the purposes of section 10(2) of the Act; and the ‘own name’ defence under section 11(2)(a) of the Act.
23. The judge found – it was not in dispute – that sales staff, employed by Premier Decorations but acting on behalf of Premier UK, had introduced themselves to customers and potential customers as being from “Premier”. He held that to be an infringement under section 10(1) of the Act. He found, also, that sales staff acting on behalf of Premier UK had introduced themselves as being from “Premier Luggage” or “Premier Luggage Company”. That would be an infringement within section 10(2)(b) of the Act if there were a likelihood of confusion on the part of the public. Further, swing tags attached to Premier UK’s products carried its name. That, also, would be an infringement within section 10(2)(b) if there were a likelihood of confusion; subject to the own name defence.
24. At paragraphs 55 to 63 of his judgment, the judge reviewed the evidence of confusion on which Premier Luggage relied. It may, I think, fairly be summarised as follows: (i) Mr Wieder gave evidence of occasions at the annual NEC Trade Fair on which people had approached Premier Luggage employees in the belief that they were employees of Premier UK; (ii) Mr Wieder was telephoned by a retailer, Mr Boros, with a complaint that (contrary to assurances given) Premier Luggage were selling to other trade customers in the Croydon area – but, on investigation, the product which had given rise to the complaint carried a pcl swing tag; (iii) Mr Sear gave evidence that he had twice bought pcl products from wholesalers in Birmingham and Manchester believing them to be a cheaper line marketed by Premier Luggage; he said he had been misled by the name of Premier UK on the pcl swing tag; (iv) Mr Bull, a retailer, gave evidence that he, or his staff, had received telephone calls in July 1998 from someone purporting to be from the Premier Luggage Company, and had thought (wrongly) that the calls were from the claimant company; (v) Mr Shafier gave evidence that, in 1997, he had gone to the Premier UK stand at the NEC Trade Fair, mistaking it for the Premier Luggage stand; and that, on one occasion when a bag had been delivered to his store for repair bearing the pcl swing tag, the store manager had sought to match it by reference to the Premier Luggage catalogue; (vi) Mr Drake and Mrs Jeans gave evidence of some confusion in their minds caused by the rival stands at NEC Trade Fairs.
25. The judge described that evidence as amounting to “considerable evidence of confusion on the part of trade customers, and, expressly or by inference, members of the public as a result of the way in which the First Defendant has pursued its business.”
26. The judge was particularly concerned with the confusion resulting from the presence of the Premier UK name on the pcl swing tags. He said this, at paragraph 65 of his judgment:

“One important feature which emerges from the evidence is that, notwithstanding the presence of PCL as a logo on the First Defendant’s products, the swing tag plays an important role in identifying, from the point of view of trade customers or the public, the source of the luggage. Furthermore, the evidence was that swing tags remain on many items of luggage long after they have been purchased. Although the oral evidence was directed almost exclusively to confusion on the part of trade customers with whom the Claimant deals, the inference may properly be drawn that, if members of the trade are misled by the name of the First Defendant on its swing tags into believing that the First Defendant’s products are those of the Claimant, then members of the public who are aware of the Claimant’s PREMIER brand are as likely to be similarly misled.”

27. But, although he found that the use of the Premier UK name on the pcl swing tags gave rise to a likelihood of confusion on the part of the public, the judge did not regard that as reflecting an intention that it should. As he said at paragraph 67 of his judgment, he was satisfied that:

“. . . the presence of the First Defendant’s name on its swing tags is not due to any desire of the First Defendant to take unfair advantage of the Claimant’s reputation or goodwill. It is there to identify the trade origin of the First Defendant’s products in case there should be any complaint about them by the consumer, and, possibly, in order to take advantage of the existing goodwill and reputation of [Premier Decorations].”

28. The judge summarised his findings in relation to the trade mark issues at paragraph 69 of his judgment:

“The Claimant’s trade mark PREMIER is properly registered. It has been infringed by verbal statements to customers and potential customers from salesmen acting for or on behalf of the First Defendant describing themselves as from “Premier” or “Premier Luggage” or “Premier Luggage Company”. Whether or not the Claimant’s trade mark has also been infringed by the presence of the First Defendant'’ name on the swing tags on its products depends on whether or not the Defendants have committed the tort of passing off by reason of those swing tags. QVC wrongly infringed the Claimant’s trade mark. The Claimant has not made a wrongful threat against QVC for infringement of the Claimant’s trade mark.”

It is clear that, but for his finding, adverse to Premier UK, in relation to passing-off, the judge would have held that trade mark infringement by the use of the Premier UK name on the pcl swing tags had not been made out.

29. I turn, therefore, to the judge’s findings in relation to the claim in passing-off. He referred, first, to the seminal passage in the speech of Lord Oliver of Aylmerton in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 (the Jif case), at page 406 (lines 17-43):

“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. Secondly, 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 the 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 upon 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 proprietor of the brand name. Thirdly, 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 those offered by the plaintiff.”

It is, perhaps, pertinent to note that that passage was introduced by Lord Oliver with the observation that:

“Although your Lordships were referred in the course of the argument to a large number of reported cases, this is not a branch of the law in which references to other cases is of any real assistance except analogically. It has been observed more than once that the questions which arise are, in general, questions of fact.”

30. The three elements identified by Lord Oliver were described by Lord Justice Nourse, in Conzorsio del Prosciutto di Parma v Marks & Spencer Plc [1991] RPC 351, at page 368 (lines 44-47) as “the classical trinity of (1) a reputation (or goodwill) acquired by the plaintiff in his goods, name, mark, etc., (2) a misrepresentation by the defendant leading to confusion (or deception), causing (3) damage to the plaintiff.”
31. The judge addressed each of the three elements in turn. As to the first, he said that it was sufficient for Premier Luggage to show that it had an established reputation or goodwill amongst retailers and wholesalers of luggage, “those being the class of the public with whom the Claimant dealt”. He went on, at paragraph 71 of his judgment:

“For the reasons already given, I find that such goodwill and reputation of the Claimant existed at the relevant date among a substantial proportion of retailers and wholesalers across substantial parts of the country. If and so far as relevant, I also find that such goodwill and reputation existed amongst some members of the public.”

32. The judge directed himself, in relation to the second element, that confusion, or the likelihood of confusion, was not sufficient on its own. He said this, at paragraph 72:

“The confusion must be such as to lead the representees to believe that the First Defendant’s products are the Claimant’s or that there is a connection of some kind between the Claimant and the First Defendant such that the Claimant has made itself responsible for the quality of the First Defendant’s products. A substantial proportion of the representees must be misled or be likely to be misled.”

He identified the representations made by Premier UK and relied upon by Premier Luggage as those arising from the oral statements by sales staff acting on behalf of Premier UK – that is to say, the self-introduction to customers and potential customers as being from “Premier”, “Premier Luggage” or “Premier Luggage Company” – and the presence of the Premier UK name on the pcl swing tags. He accepted that there was no deliberate intention to deceive: “the objective was to establish the connection with Premier plc and Premier Decorations”. But he went on to say this, at paragraph 75 of his judgment:

“I am clear, nevertheless, that the matters mentioned . . . were and are likely to lead wholesalers or retailers or, in the case of the swing tags, end users who are aware of the Claimant’s reputation and PREMIER mark, to believe that the First Defendant’s products are those of the Claimant. For what it is worth, actual evidence of such confusion leading to misplaced sales was given by Mr Sear (see paragraph 57 above), and both his mistake and the confusion of Mr Shafier and his manager (see paragraph 59 above) indicate the ease with which members of the public might be misled into purchasing the First Defendant’s products. As I have said, the evidence indicates that swing tags play an important role in identifying the source of the product: . . .”

33. The judge pointed out that the damage, or threat of damage, which a claimant must establish in order to satisfy the third element of the tort might take the form of lost sales, or of damage to reputation or goodwill, without any corresponding gain to the defendant. He said this, at paragraph 76 of his judgment:

“. . . I find that the Claimant has built a reputation based on good quality products at reasonable prices, and that the products of the First Defendant, while very competitive in price, are generally of a lower quality. The evidence establishes that wholesalers and retailers with whom the Claimant deals are reluctant to stock goods which stand a substantial risk of complaint by end-users and possible returns. On the basis of the evidence I have heard, I find that, in view of the lower quality of the First Defendant’s products and the level of returns of the First Defendant’s products, and in view of possible confusion between the First Defendant’s goods and the Claimant’s or of a connection between the Claimant and the First Defendant, it is likely that both existing custom between the Claimant and its trade customers and potential future business with new trade customers as well as sales of the Claimant’s products to the consumer may suffer.”

34. Having found that the three elements of the classical trinity were established, the judge held that Premier Luggage had made out its case in passing off against Premier UK. It followed that he held, also, that Premier UK could not rely on the own name defence under section 11(2)(a) of the 1994 Act to avoid a finding of infringement in relation to the pcl swing tags.
35. The judge was not persuaded that he should hold Mr Mahtani liable as a joint tort-feasor with Premier UK. He said this, at paragraph 77 of his judgment:

“[The evidence] does not establish . . . that [Mr Mahtani] was in any way responsible for the way in which salesmen acting for or on behalf of the First Defendant introduced themselves to customers or potential customers. Nor does it establish that the First Defendant’s decisions, including the form of the swing tags, were made without reference to anyone else. The evidence is that, at all relevant times Mr Mahtani has been only one of three shareholders in the First Defendant, and that they have (or rather, since Mr Mahtani has 34% of the issued shares, they regard themselves as having) one third of the shares each. The evidence does not go so far as to establish that Mr Mahtani conducts the affairs of the First Defendant, including deciding on the use of the First Defendant’s name on the swing tickets, without reference to his co-shareholders.”

Accordingly he dismissed the claims against Mr Mahtani personally.

The issues on this appeal:(i) Passing-off

36. As pleaded, the primary claims in these proceedings were based on the allegations of passing-off. As I have said, the claim in respect of trade mark infringement is advanced in the statement of claim on the premise that the use by Premier UK of its company name “in such a manner as to amount to passing off is not in accordance with honest practices in commercial matters”. Although the judge found that there was trade mark infringement under section 10(1) of the 1994 when (as was admitted) sales staff acting on behalf of Premier UK introduced themselves to customers and potential customers as from “Premier”; and under section 10(2)(b) when sales staff introduced themselves as from “Premier Luggage” or “Premier Luggage Company”, those acts of infringement had been put forward, in a response to a request for further and better particulars of the allegation in paragraph 8 of the statement of claim, as particulars of the use of the company name “in such manner as to amount to passing off”. It is, I think, appropriate to address the allegations of passing off before addressing the trade mark issues – and, in particular, the issue of invalidity.
37. It is essential to keep in mind that, as Lord Justice Millett put it in Harrods Limited v Harrodian School Limited [1996] RPC 697, at page 711 (lines 33-36) in a passage to which the judge referred:

“. . . the property which is protected by an action for passing off is not the plaintiff’s proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant’s misrepresentation.”

The relevant question, in the context of an action for passing off, is not whether there is a risk of confusion because the defendant’s name is similar to the plaintiff’s name; the relevant question is whether the defendant’s use of his name in connection with his goods or his business will be taken as a representation that his goods or business are, or have some connection with, the goods or business of the plaintiff – so giving rise to harm, or the risk of harm, to the goodwill and reputation which the plaintiff is entitled to protect. A risk of confusion is not enough – see the observations of Lord Simonds in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39, at page 43:

“So in Turton v Turton (42 ChD 128) the possibilities of blunders by the public was held not to disentitle the defendant from trading in his own name though the plaintiff had long traded in the same name. It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avoid confusion.”

More recently, Mr Justice Lloyd was right, if I may say so, to point out in HFC Bank Plc v Midland Bank Plc [2000] FSR 176, at page 201, that even actual confusion does not show that there has been misrepresentation by anyone; all that it shows is “that people make assumptions, jump to unjustified conclusions, and put two and two together to make five.”

38. It is of some significance, therefore, that the particulars of passing off alleged in the statement of claim are introduced by the words: “At the trial of this Action the Plaintiff will rely upon all or any instances of confusion or evidences of the likelihood of confusion that are then known to it”. The instances of confusion which follow include some of those which were identified by the judge at paragraphs 55 to 63 of his judgment, to which I have already referred. The judge described the evidence of confusion as “considerable”. But, there was no evidence that anyone to whom Premier UK sales staff had introduced themselves as from “Premier”, or from “Premier Luggage” or “Premier Luggage Company” had been misled into doing business with Premier UK in the belief that Premier UK was Premier Luggage. Nor is it likely that many of those called by Premier UK sales staff would be misled. The evidence was that their sales effort was directed at national retailers who were existing customers of Premier Decorations. The probability, as it seems to me, is that that those called by Premier UK sales staff would make the connection – which, as the judge accepted, they were intended to make – between the caller and Premier Decorations. They would not think that the caller was from Premier Luggage, a company with whom they had not had previous dealings.
39. The only purchaser of a Premier UK product who - on the basis of the judge’s findings - was misled by the belief that it was the product of Premier Luggage was Mr Sear, who bought pcl products from wholesalers in Birmingham and Manchester thinking them to be a cheaper line marketed by Premier Luggage. He told the judge that he had been misled by the name of Premier UK on the pcl swing tag. The judge thought that that was “indicative of the ease with which members of the public might be misled into purchasing the First Defendant’s products.” But the judge should, I think, have asked himself whether there was any real likelihood that the swing tag would mislead. The correct approach has not been in dispute. It is to be found in the judgment of Mr Justice Jacob in Neutrogena Corporation v Golden Limited [1996] RPC 473, at page 482 (lines 17-27) – a passage cited by Lord Justice Morritt (at page 492) when giving judgment on the appeal in that case with apparent approval:

“The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall “jury” assessment involving a combination of all these factors, see ‘GE’ Trade Mark [1973] RPC 297 at page 321. Ultimately the question is for the court, not for the witnesses. It follows that if the judge’s own opinion is that the case is marginal, one where he cannot be sure if there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one’s own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. .”

40. This Court is in as good a position as the judge to form an opinion from examination of the pcl swing tag whether the tag is likely to mislead. My own examination of the pcl swing tag leads me to the view that it is unlikely that a purchaser of a product bearing that tag, and having knowledge of PREMIER branded products, would be led to think that the pcl product was associated with Premier Luggage. The tag is a rectangular card, the dimensions of which are 7.5cm by 10cm. It has a front and a reverse face. The reverse face contains a bar code, a description of the product and a guarantee. The dominant feature of the tag – occupying about 60% of the area of the other face - is the logo or mark “pcl”. The name “The Premier Company (UK) Limited” appears below the mark. The name, the address and contact numbers (telephone, fax and e-mail) occupy the remaining 40% of the front face. The name, although easy to read, is in no sense striking or dominant. A casual glance at the swing tag identifies it as a pcl tag. There is nothing to suggest that the tag is intended to identify the product to which it is attached as a PREMIER branded product; it is obviously a pcl branded product. A purchaser who is sufficiently interested in the swing tag to read the company name will see at once that it is not the name of the company “Premier Luggage and Bags Limited”.
41. Applying the test approved by this Court in the Neutrogena case, I am bound to say that my own view is that it is most unlikely, although just possible, that the swing tag would lead a purchaser to think that a product to which it was attached was associated with Premier Luggage. I recognise that that view should yield to convincing evidence of actual deception; and that proper weight must be given to the judge’s own view. But, in the present case, there is no convincing evidence of actual deception – indeed, no evidence of any actual deception other than that of Mr Sear – and no analysis by the judge to explain his conclusion on this point. With some hesitation – because this was a question of fact for determination at trial – I would reverse his decision on this point. Where determination of the relevant question of fact turns, almost exclusively, on the examination and assessment of visual evidence which is before this Court, I do not feel bound to accept a finding which, as I think, is plainly wrong.
42. It follows that I would allow this appeal in relation to the claim in passing off.

(ii) Trade mark infringement

43. If the use by Premier UK of pcl swing tags does not amount to passing off, the claim for infringement of trade mark based on that use must fail also. This is because, as the judge recognised, there was no desire on the part of Premier UK to take unfair advantage of the reputation or goodwill of Premier Luggage. The swing tags were used for a legitimate commercial purpose – to identify the trade origin of Premier UK’s product and to take advantage of the existing goodwill and trade connections of Premier Decorations. The use of the name “The Premier Company (UK) Limited” and the address “Premier House” on the swing tags is within section 11(2)(a) of the 1994 Act.
44. That cannot be said in relation to the self-introduction by sales staff as being from “Premier”, or from “Premier Luggage” or “Premier Luggage Company”. The own name defence provided by section 11(2)(a) is not available because the name used was not the name “The Premier Company (UK) Limited”; it was an abbreviation or adaption of that name.
45. The judge was correct, in my view, to distinguish between the use of the single word “Premier” and the use of the combinations “Premier Luggage” or “Premier Luggage Company”. The first constitutes infringement within section 10(1) of the Act. In that context, it is unnecessary that there should exist a likelihood of confusion. The use of the mark “Premier” in combination with other words falls within section 10(2)(b) if, but only if, “there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”.
46. The judge found that there did exist a likelihood of confusion on the part of the public. I have already indicated my view that that fell short of a finding that those to whom sales staff acting for Premier UK introduced themselves as from “Premier Luggage” or “Premier Luggage Company” were misled into doing business with Premier UK in the belief that Premier UK was Premier Luggage – so as to found a claim in passing off. I accept that the test under section 10(2) of the 1994 Act - “likelihood of confusion” - is not the same as the test in relation to passing off – “misrepresentation likely to mislead”. The view which I have expressed in the context of considering the claim in passing off does not lead, necessarily, to the conclusion that the claim for trade mark infringement under section 10(2)(b) was not made out. But the requirement under section 10(2) is not simply that there should exist a likelihood of confusion on the part of the public; the likelihood of confusion must include “the likelihood of association with the trade mark”. The judge did not, in terms, address that requirement. I am not persuaded that the findings which he did make in relation to confusion go so far as to establish that the likelihood of confusion between the two companies trading under similar names does include a likelihood that those who were called by sales staff acting for Premier UK would make a connection with the mark PREMIER. As I have said, the probability, in the particular circumstances of this case, is that those called by Premier UK sales staff would make the connection – which, as the judge accepted, they were intended to make – between the caller and Premier Decorations.
47. It follows that I would allow this appeal in relation to trade mark infringement under section 10(2)(b) of the 1994 Act; but (subject to the question of invalidity to which I now turn) would dismiss the appeal in relation to infringement under section 10(1) of the Act.

(iii) Invalidity

48. By its counterclaim in the proceedings Premier UK sought a declaration, under section 47(1) of the 1994 Act, that registration of the mark PREMIER, was invalid on the ground that it was registered in breach of section 3 of the Act (absolute grounds for refusal of registration). The judge refused to make a declaration of invalidity, for the reasons which he gave. Premier UK appeals against that refusal.
49. In the circumstances of the present case, the application for a declaration of invalidity raised four distinct questions; (i) whether the word “Premier” was capable of distinguishing goods and services of one undertaking from those of other undertakings – see sections 1(1) and 3(1)(a) of the Act; if so (ii) whether the trade mark PREMIER - for, on that hypothesis, the word would be a trade mark within the definition in section 1(1) – was devoid of any distinctive character, alternatively, consisted exclusively of signs or indications which might serve, in trade, to designate the quality or other characteristics of the goods – see section 3(1)(b) and (c) of the Act; if so (iii) whether, before the date of application for registration (18 February 1997), the trade mark PREMIER had acquired a distinctive character as a result of the use made of it in connection with the goods of Premier Luggage – see the proviso to section 3(1); and, if it had not, (iv) whether, in consequence of the use made of it after registration, the trade mark PREMIER had acquired a distinctive character in relation to the goods or services for which it is registered.
50. The judge answered the first two of those questions in the affirmative. In my view he was correct to do so. I reject the submission, made on behalf of Premier UK in this Court, that the word “Premier” is incapable of being or becoming distinctive of origin. In particular, I do not accept that the word “Premier”, although plainly capable of being used in a descriptive or adjectival sense (denoting primacy or superiority over other members of the class) and so (absent use) devoid of any inherent distinctive character, cannot become distinctive of origin as a result of use in relation to particular goods or services. “Premier” is not a word like “soap” which can only describe the article to which it is applied – see the observations of Mr Justice Jacob in the British Sugar case (British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281) at pages 302 and 305 to which the judge referred. Nor is it a word which, although once capable of being distinctive, has become solely descriptive through use – see the examples given in the Bach case (Bach and Bach Flower Remedies Trade Marks [2000] RPC 513) at paragraph 34 (at page 526).
51. The relevant question, therefore, is whether the trade mark had acquired a distinctive character through use in connection with products supplied by Premier Luggage either by the date of application, or (if not) by the date of the trial. The judge did not differentiate between those dates – because, as he said at paragraph 21 of his judgment:

“Although the proviso [to section 3(1) of the Act] refers to the mark acquiring distinctiveness prior to the date of the application for registration, section 47 of the 1994 Act provides that, if it is sought to obtain a declaration of invalidity where a mark has already been registered, it is sufficient if a distinctive character has been acquired since registration.”

There is, I think, a danger in that approach, because it fails to recognise where the burden of proof lies in the two cases. The position was explained by Mr Justice Jacob in the British Sugar case, at page 302 (lines 7-12). After pointing out that section 72 of the Act provided that registration of a person as proprietor was prima facie evidence of the validity of the original registration, Mr Justice Jacob went on to say this:

“This clearly casts the onus on he who wishes to attack the validity of the original registration. But once the attacker can show the registration was wrongly made (particularly for non-compliance with section 3(1)(b) –(d)) and the proprietor wishes to rely on the proviso to section 47(1) it is for the proprietor to show that is mark is distinctive.”

In the present case, it was for Premier UK to show that the trade mark PREMIER – which, although not registered under the Act, had been in use for many years as a brand name for the products of Premier Luggage – had not acquired a distinctive character as a result of that use by February 1997. It was only if Premier UK overcame that hurdle that the onus shifted to Premier Luggage to establish that the mark had acquired a distinctive character through use after registration.

52. Although the judge did not, I think, appreciate that distinction – in that, as appears from paragraph 22 of his judgment, he approached the question whether the mark had acquired a distinctive character on the basis that the onus lay on Premier Luggage to bring itself within the proviso to section 3(1) – I am satisfied that the findings of fact which he made are sufficient to enable this Court to answer the relevant question: that is to say, whether the trade mark PREMIER had acquired a distinctive character as a result of the use made of it as a brand name for the products of Premier Luggage before February 1997. Section 72 of the Act requires an affirmative answer to that question unless Premier UK - as the person challenging registration – has established by the evidence that it must be answered in the negative. And, if the answer to that question is “Yes”, then the fourth question - whether, in consequence of the use made of it after registration, the trade mark PREMIER had acquired a distinctive character - does not arise.
53. In my view the judge applied the correct test when he directed himself that he must consider whether the evidence established that the average consumer (including both trade purchasers and members of the public) would appreciate that the PREMIER mark displayed on the products of Premier Luggage was not used in a laudatory sense but as a distinctive branding of the products. In reaching the answer that the average consumer would appreciate that the mark was used as a brand name the judge was entitled to accept the evidence of the witnesses called on behalf of Premier Luggage. I reject the criticisms of that evidence made on this appeal by counsel for Premier UK. It was for the judge to decide, having seen and heard the witnesses, whether he thought that the value of their evidence was diminished by the circumstances in which witness statements had been prepared.
54. In reaching the conclusion that the average consumer would appreciate that the mark PREMIER was used as a brand name, the judge took account of, but rejected, evidence given by Mr Perry, formerly a buyer for a large retailer to the effect that brand name was not a factor which the public took into account. He was entitled to reject that evidence. The judge took account of evidence given by Mr Mahtani – but much of that went to the position after Premier UK had entered the market at the end of 1996. In the circumstances that the relevant enquiry was whether the mark was distinctive of origin in relation to the products of Premier Luggage by February 1997, evidence of what had happened after Premier UK had entered the market was of little or no assistance. Further, in directing himself that the onus of establishing that the mark had acquired distinctiveness was upon Premier Luggage, the judge adopted an approach which, in relation to the relevant enquiry, was unduly favourable to Premier UK. Premier UK can make no complaint about that.
55. The judge had to consider whether the existence of other suppliers in the market – Premier Leather Goods, Premier Marque Limited and Premier Case Company Limited – should have led him to the conclusion that the mark PREMIER could not have become distinctive of origin in relation to the products of Premier Luggage. He accepted the evidence of Mr Wieder and others that none of those suppliers traded in goods which could properly be regarded as competition for the products of Premier Luggage; and that it was “extremely unlikely” that there would be any confusion between them on the part of customers or potential customers – see paragraph 29 of his judgment. We have been taken to the evidence, including sales brochures and other promotional material showing the nature of the goods. For my part, I am not persuaded that the judge was not entitled to reach the conclusion which he did on that point. I reject the implied invitation – which pervaded much of the submissions made to us on behalf of Premier UK - that this Court should attempt to retry the case on the transcripts. That is not the role of an appellate court.
56. It follows that I would dismiss the appeal against the judge’s refusal to make a declaration of invalidity.

The cross-appeal

57. Premier Luggage has sought to challenge, by way of cross-appeal, the judge’s refusal to hold Mr Mahtani liable as a joint tort-feasor with Premier UK for trade mark infringement and passing off. In the circumstances that I would allow the appeal by Premier UK in relation to passing off, and would allow the appeal in relation to trade mark infringement save in respect of the use by the sales staff of the single word “Premier” when introducing themselves to customers or potential customers, this challenge cannot be sustained. The judge found that Mr Mahtani was not in any way responsible for the way in which sales staff introduced themselves – see the passage in paragraph 77 of his judgment to which I have already referred. But I should add this. The circumstances in which an individual, who has not participated directly in the acts of infringement complained of, may be held liable as a joint tort-feasor with a company which is, itself, the primary infringer, were analysed by this Court in MCA Records Inc v Charly Records Limited [2001] EWCA Civ 1441 [2002] EMLR 1. There is nothing in the judge’s approach in this case which is inconsistent with that analysis – which was not, of course, available to him.

Conclusion

58. I would allow the appeal in relation to passing off. I would allow the appeal in relation to trade mark infringement under section 10(2)(b) of the 1994 Act; but dismiss the appeal in relation to infringement under section 10(1) of the Act. I would dismiss the appeal from the judge’s refusal to make a declaration of invalidity under section 47(1) of the Act; and dismiss the appeal against the refusal to give relief, on the counterclaim, under section 21 of the Act in respect of threats. I would also dismiss the cross-appeal.

Sir Anthony Evans:

59. I agree.

Sir Denis Henry:

60. I also agree.

Lord Justice Chadwick :

61. Copies of our judgments , in draft, were sent to counsel in advance of formal delivery. Upon consideration of those drafts counsel for Premier Luggage have asked us to reconsider our conclusion that the judge was wrong to find that the claim in passing off had been established against Premier UK. We have done so, in the light of the written submissions in counsel’s letter of 25 March 2002 as elaborated in further oral argument this morning.

Counsel have drawn our attention to the observations of Lord Justice Buxton in Norowzian v Arks Ltd (No 2) [2000] FSR 363 at page 370, approved by Lord Hoffmann in Designer Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, at page 2424A-B

“. . . where it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least two of them, will be different from that of the trial judge.”

It is to be noted that in Designer Guild – a case on copyright infringement – the House of Lords held that this Court had fallen in the error of thinking that it was in as good a position as the trial judge to decide whether there had been substantial copying of the claimant’s work. The judge, in that case, had had the benefit of expert evidence in what was described as “the art of visual literacy”.

62. We accept, of course, that this Court should not interfere with the decision of the trial judge on the question whether there was a likelihood of deception unless satisfied that his approach to that question was flawed by some error in principle. But, in this case, we do take the view that the judge erred in principle. The error of principle is identified paragraph 39 of my judgment. The judge should have asked himself whether he was satisfied that there was any real likelihood that the swing tag would mislead. The judge did not, in terms, address that question – perhaps because he did not think it necessary to distinguish his findings in relation to likelihood of deception (in relation to passing off) from his findings on risk of confusion (in relation to trade mark infringement). But the question in relation to passing off is not the same as that in relation to trade mark infringement, as I have sought to point out at paragraph 37 of my judgement.
63. It is in those circumstances that we do not feel bound by the judge’s conclusion on the point. For the reasons set out in paragraph 40 of my judgment, we do take the view that, in the particular circumstances of this case, we are in as good a position as the judge to determine the narrow – and essentially visual – question whether the pcl swing tag is likely to mislead. Having reconsidered the point at the request of counsel for Premier Luggage, we remain of the view that the answer to that question is “No”.
ORDER: The appeal will be allowed in part, the cross appeal will be dismissed. Paragraphs 1, 2, 3, 5 and 6 of the order of 12 July 2000 will be set aside. The second defendant to have his costs of the cross appeal in so far as they are separate from the costs incurred generally on the cross appeal. No order as to the costs of the appeal and cross appeal in this court on either side. The defendants to have, in addition to the second defendant’s separate costs, 50 per cent of the costs below. Permission to appeal to the House of Lords refused. Certificate under section 73 granted. (Order not part of approved judgment)