7 Rolls Buildings
London EC4A 1NL
B e f o r e :
| SOCIÉTÉ ANONYME DES BAINS DE MER ET DU CERCLE DES ÉTRANGERS À MONACO
|- and -
ANGLOFILE INTERNATIONAL LIMITED
TRADING AS MONTE CARLO CASINO ENTERTAINMENT
Mr Alexander Hammond (company secretary of the Defendant) in person
Hearing dates: 16 & 17 July 2013
Crown Copyright ©
Miss Recorder Amanda Michaels:
i) Community Trade Mark No. 8395857 ('the Monte-Carlo Mark'), filed on 30 June 2009, for the words 'MONTE-CARLO' and covering the following goods:
Computer programs and software; Casino game software.
Playing cards, counters (discs) for games, dice, gaming tables, mats for games, slot machines.
ii) International Trade Mark (designating the EU) No 1025318 ('the Casino de Monte-Carlo Mark'), protected in the EU since 26 November 2010 for the words "CASINO DE MONTE-CARLO" and covering the following goods and services:
Software and computer programs; casino gaming software.
Playing cards, counters (discs) for games, dice for games, game tables, mats for games, slot machines.
Online reservation services via an Internet commercial services portal with regard to casino gaming.
Entertainment, providing casino facilities (gambling), providing amusement arcade services, gambling, information on entertainment and casino facilities (gambling), organization of competitions and championships for games, remote casino gaming services, providing casino gaming online on a computer network, casino gaming services accessible via a telephone network.
i) the Claimant's goodwill and reputation in the trade marks Monte-Carlo and Casino De Monte-Carlo;
ii) factual issues relevant to the defence of common-law acquiescence/estoppel and earlier rights;
iii) the distinctiveness and use of the trade marks relied upon by the Claimant;
iv) any incidences of actual confusion on the part of the public, which includes incidences of association with the trade marks relied upon by the Claimant; and
v) any unfair advantage taken of and/or detriment caused to the distinctive character or repute of the trade marks relied upon by the Claimant by reason of the Defendant's actions.
Infringement of the Registered Marks
"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:
(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 repute of the Community trade mark."
Infringement under Article 9 (1)(b)
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."
The average consumer
"Monte Carlo Casino Entertainment can bring all the fun and excitement of a real casino to your event or party. Whether your plans are for corporate entertainment, a private party or charity fund-raising our fun casino can entertain and amuse your guests in style.
Founded in 1994 Monte Carlo Casino Entertainment was one of the first fun casino is running in the UK, and has grown to become one of the largest fun casino companies in England thanks to our professionalism, quality of service and very competitive pricing …
Monte Carlo Casino Entertainment operates throughout the UK and has full public liability insurance."
"you select from our wide range of full-size gaming tables and we provide the rest. We offer the following games: American Roulette, Blackjack, Texas Hold 'em Poker, Stud Poker, Craps, Wheel of Fortune, and Dice … Our croupiers and gaming directors are all professionally trained and have experience in some of the world's best casinos. But remember - we are there to entertain and make sure that you and your guests have an unforgettable time."
Distinctiveness of the trade mark
i) prominent advertising at the annual Monaco Grand Prix which is said to be watched by a large television audience in the United Kingdom, with examples given from 2007 onwards and viewing figures for 2010-12. The evidence does not state when UK television first aired the race;
ii) sponsorship of sports events, such as the ATP Masters tennis tournament, in Monaco, with photographs of signage in 2008, and television viewing figures given only from 2007 onwards;
iii) the purchase and maintenance of thousands of domain names attracting hits from UK visitors, Facebook, Twitter and Instagram accounts – no specific dates were provided for these but, given their nature, I assume that they are relatively recent;
iv) ownership of various websites, including those at www.casinomontecarlo.com and www.montecarlocasinos.com; these appear to have been in operation since 2009 and 2011 respectively, and figures for total hits from the UK were given varying between 80,000 and 100,000 in 2009-2011;
v) its on-line gambling site, which has attracted 287 UK clients since its launch in 2011;
vi) advertising in UK newspapers and magazines "dating back to 1906"; the examples provided included two advertisements from 1906 in 'The Sketch' and 'The King', headed 'Monte Carlo', but with a large reference to 'the Casino of Monte Carlo' as well as other attractions at the resort, which it described as "The most marvellous place in the world, situated on the plateau facing the old rock of Monaco …". I can, I think, infer from the terms of the advertisements that these were UK publications, although I am not familiar with them, and no evidence was given about them or their circulation figures. Almost all of the further advertisements exhibited dated from 2008 onwards; most advertised SBM's various attractions, and many used the strapline 'Be Monte Carlo' and/or SBM's composite stylised mark:
[Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture]
vii) mailshots, an English language electronic newsletter and a magazine, 'MonteCarlo Society' for which figures were given from 2010 – 2011. Mr van Peteghem's witness statement indicated that 1716 of the recipients of the e-news letter had .uk email addresses. That statement was not supported by the much shorter (2 page) list which he exhibited; on the contrary, it showed many addresses which were plainly German, Japanese etc. The circulation list exhibited for the SBM magazine showed only 7 UK recipients of the Autumn 2008 issue;
viii) the numbers of rooms booked at SBM's hotels by UK customers from 2008 – 2012, a total of about 81,000 'nights' across the 4 hotels;
ix) the numbers of UK citizens who played table games at the Casino de Monte-Carlo (and who therefore had to provide identification, none being necessary to visit other parts of the casino). There were a total of only 365 such visitors from 2007-2012: 71 in 2007, 58 in 2008, 57 in 2009 and 56 in 2010;
x) evidence of a partnership commencing in 2005 with a UK company providing gambling venues in the UK, giving their customers access to the Casino. No evidence was given as to how many (if any) UK customers took advantage of that possibility. The documents relating to that partnership included an advertisement which prominently used the name Monte Carlo but not (that I could read) the name 'Casino de Monte Carlo', and advertised 'Société des Bains de Mer Hotels, Spas & Casinos.' The evidence did not show where the advert was placed. Press coverage did not refer to either Registered Mark and a leaflet did not use the Casino de Monte Carlo Mark;
xi) press releases in English 'in large part aimed at UK publications and customers' and marketing materials in English sent to UK customers, with examples given for mainly from 2011- 2012. The numbers sent to the UK however appear to have been very low – a 2011 press release for a roulette competition was sent to 30 UK recipients, a 2012 advert for all of the casinos was sent to 20 UK recipients;
xii) references to the Casino de Monte-Carlo in popular culture, especially in films; and
xiii) references in guidebooks, examples of which were given from books published in 2012 and 2013 (without any evidence to show that the same features appeared in earlier editions) and in press travel articles.
Similarity of the Casino de Monte-Carlo Mark and the Defendant's signs
Similarity of services
Global assessment of the likelihood of confusion
Infringement under Article 9 (1)(c)
"187 In order for the use of a sign to infringe under Article 9(1)(c), four requirements must be satisfied. The first is that the trade mark has a reputation in the relevant territory. This is not in issue in the present case.
188 The second requirement is that the use of the sign complained of gives rise to a "link" between the sign and the trade 'mark in the mind of the average consumer, even if the average consumer does not confuse them. Again, this is not in issue in the present case.
189 The third requirement is that the trade 'mark proprietor must establish the existence of one of three kinds of injury, which were described by the Court of Justice in L'Oréal v Bellure as follows:
"37. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade 'marks with a reputation (see, to that effect, Intel Corporation, paragraphs 31 and 32).
38. Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27).
39. As regards detriment to the distinctive character of the 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 is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29).
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.
41. As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade 'mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28)."
190 The Court of Justice had previously given guidance with regard to detriment to the distinctive character of the trade 'mark in the context of Article 4(4)(a) of the Directive in Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd  ECR I-8823. In that case the Court held as follows:
i) The more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is detrimental to the distinctive character of the mark: .
ii) The stronger the earlier mark's distinctive character and reputation, the easier it will be to accept that detriment has been caused by it: .
iii) The existence of a link between the sign and the mark does not dispense the trade 'mark proprietor from having to prove actual and present injury to its mark, or a serious likelihood that such an injury will occur in the future: .
iv) The more "unique" the trade mark, the greater the likelihood that use of a later identical or similar mark will be detrimental to its distinctive character: .
v) Detriment to the distinctive character of the trade'mark is caused when the mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor is weakened. It follows that proof that the use of the sign 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 mark is registered consequent on the use of the sign, or a serious likelihood that such a change will occur in the future: .
191 The Court of Justice explained the correct approach to the determining whether unfair advantage has been taken of the trade mark in L'Oréal v Bellure as follows:
"44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).
45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
46. In the present case, it is a matter of agreement that Malaika and Starion use packaging and bottles similar to the marks with a reputation registered by L'Oréal and Others in order to market perfumes which constitute 'downmarket' imitations of the luxury fragrances for which those marks are registered and used.
47. In that regard, the referring court has held that there is a link between certain packaging used by Malaika and Starion, on the one hand, and certain marks relating to packaging and bottles belonging to L'Oréal and Others, on the other. In addition, it is apparent from the order for reference that that link confers a commercial advantage on the defendants in the main proceedings. It is also apparent from the order for reference that the similarity between those marks and the products marketed by Malaika and Starion was created intentionally in order to create an association in the mind of the public between fine fragrances and their imitations, with the aim of facilitating the marketing of those imitations.
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
50. In the light of the above, the answer to the fifth question is that Article 5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
"English procedural law says that if you allege in your pleading facts which, if proved, would establish a cause of action, that is sufficient to support a claim for that cause of action: see e.g. Letang v Cooper  1 QB 232 and In re Vandervell's Trusts (No 2)  Ch 269, 321. You do not have to spell out precisely the legal basis of the cause of action. "Pleadings" in England have a technical meaning. They are the documents which contain the assertions of fact which the party intends in due course to prove by evidence. They do not need to include arguments of law and seldom do. ..."
"A community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
Provided he uses them in accordance with honest practices in industrial or commercial matters."
" First, the requirement to act in accordance with honest practices in industrial or commercial matters "constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor": …
 Secondly, the court should "carry out an overall assessment of all the relevant circumstances", and in particular should assess whether the defendant "can be regarded as unfairly competing with the proprietor of the trade mark": …
 Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices: ...
 Fourthly, a mere likelihood of confusion will not disqualify the use from being in accordance with honest practices if there is a good reason why such a likelihood of confusion should be tolerated ...
118 In applying these principles in Cipriani  EWHC 3032 (Ch), Och-Ziff  FSR 11 and Datacard  RPC 17 , it can be seen that I have treated the following factors as material:
i) whether the defendant knew of the existence of the trade mark, and if not whether it would have been reasonable for it to conduct a search;
ii) whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions;
iii) the nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant's goods or services;
iv) whether the defendant knew that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object;
v) whether the defendant knew, or should have appreciated, that there was a likelihood of confusion;
vi) whether there has been actual confusion, and if so whether the defendant knew this;
vii) whether the trade mark has a reputation, and if so whether the defendant knew this and whether the defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected;
viii) whether the defendant's use of the sign complained of interferes with the owner's ability to exploit the trade mark;
ix) whether the defendant has a sufficient justification for using the sign complained of; and
x) the timing of the complaint from the trade mark owner.
i) Did the Defendant know of the existence of the trade mark, and if not would it have been reasonable for it to conduct a search? There are several points here:
(a) The trading name was chosen in about 1995 by Mr and Mrs Hobbs, the Defendant's predecessors in title. There was no evidence before me as to the circumstances in which the trading name was chosen, hardly surprisingly as neither party was aware of such circumstances.
b) Whilst it might have been proper to have undertaken a trade mark search in 1995, in the light of the accepted renown of Monte-Carlo for casinos, no-one now involved knows what investigations (if any) may have been carried out by Mr and Mrs Hobbs.
c) However, SBM has produced no evidence that it had any registered trade mark rights valid in the UK prior to Mr and Mrs Hobbs' choice of the Defendant's trade name. The only registered rights relied upon are the Registered Marks, which are of far later date. Indeed, so far as I can see, none of the other registered marks listed in the letter of claim of 17 February 2011 or in the follow-up letter of 11 March 2011 had been registered or claimed a priority date any earlier than 1996 - most were of far later date. Mr Hammond exhibited to the Counterclaim some searches which he had carried out of the WIPO register; those showed quite a number of marks containing the name Monte-Carlo, but none that I could see that were relevant in particular in terms of the filing date of the registration.
d) As a result, had Mr and Mrs Hobbs carried out a trade mark search in 1995, there is no evidence before me to suggest that they would have come across any rights owned by SBM which might have caused an honest trader to consider it inappropriate to adopt the Monte Carlo Casino Entertainment trade name. I am not therefore prepared to infer that the choice of the trading name in 1995 was less than honest.
e) As for the Defendant's own position, there was no evidence before me to suggest that it acted other than honestly. It took over an existing business in 2002 with an existing trading name and there was no evidence suggesting that it should have been alerted to a clash with any rights belonging to SBM (certainly none had been intimated by SBM). On the contrary, Mr Hammond's evidence was that whilst he knew that Monte Carlo was known for its casino, rather like Las Vegas, until this case arose he had thought that the casino was called 'Casino Royale,' as in the James Bond film and book. I see no reason to disbelieve that evidence, especially as he accepted that Monte Carlo was known for its casinos.
f) If the Defendant had checked the register in October 2002, it might have come across the 2002 Casino de Monte-Carlo mark mentioned in SBM's solicitors' letter of 11 March 2011. That mark was registered for education; training; entertainment; sporting and cultural activities in Class 41. However, the mark is, as I have found, only moderately similar to the trading name of the business which the Defendant was intending to buy, and in the circumstances it does not seem to me that it ought to have been alerted to the possibility that use of the trading name might have infringed SBM's rights such that that the decision to buy the business, and continue using a trading name which had been in use for 7 years before that mark was registered, was not in accordance with honest practices.
g) Another point as to the honesty of the Defendant's use related to the SEO activities mentioned above. Again, nothing in the advice to 'grab' references to 'Monte Carlo Casino' on the web suggests to me that the Defendant was acting less than honestly in seeking to increase its internet presence in 2011 by reference to the trading name which had been used since 1995 and its domain name (and email addresses etc) also used for many years.
ii) Did the Defendant use the sign complained of in reliance on competent legal advice based on proper instructions? No-one knows the position in 1995; it seems doubtful that the Defendant has taken any such advice.
iii) The nature of the use complained of, and in particular the extent to which it is used as a trade mark for the Defendant's goods or services: The nature of the use is described above; it is trade mark use and is 'upfront' use, with use of various permutations of the name to promote the business. SBM complained about the Defendant's more recent use of permutations of the name on Facebook etc, and it is right that a trader who knows of another's rights should take care not to expand his business so as to cause confusion where none arose before. However, given my findings as to the lack of any likelihood of confusion arising from the changes made in 2011, I do not consider that the Defendant's decision to make such uses meant that it acted unfairly towards SBM or was less than objectively honest.
iv) Did the Defendant know that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object? No. The Defendant had no knowledge of any objection and in my judgment had no reason to anticipate such an objection until 2011.
v) Did the Defendant know, or should have appreciated, that there was a likelihood of confusion? Given my findings as to likelihood of confusion, there was no reason for the Defendant to have anticipated it.
vi) Has there been actual confusion, and if so whether the Defendant knew this? No
vii) Has the trade mark a reputation, and if so whether the Defendant knew this and whether the Defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected? I have found a reputation only for the Casino de Monte Carlo Mark, but the Mark and the reputation significantly post-dates the choice of the Defendant's trading name, so there can have been no such appreciation at that date.
viii) Does the Defendant's use of the sign complained of interfere with the owner's ability to exploit the trade mark? I consider this highly unlikely given the nature of the Defendant's business.
ix) Does the Defendant have a sufficient justification for using the sign complained of? The use appears to me to be justified by the long-term use of it without complaint, confusion or damage coming to light.
x) The timing of the complaint from the trade mark owner. Here, the complaint was made first some 16 years after first use of the trading name.
The claim to passing off
(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;
(2) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
(3) the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.
"38 … Whether a business based abroad has a reputation in this country is a question of fact. Absent such a reputation, it can have no goodwill. If it does have a reputation here, it is likely also to have goodwill, but that depends (speaking in very general terms for the present) on the nature and extent of any business activity which it carries out here. I will consider later the test applicable under English law as to what is required for this purpose. For the moment it is sufficient to say that, if its business is in the sale of ordinary retail goods for domestic consumption (e.g. cans of beer) it does not have goodwill here if its products are not available for sale to the public here: Anheuser-Busch Inc v Budejovicky Budvar NP  F.S.R. 413 (which I will call Budweiser ). How that applies to a business which supplies services, and which only does so at its own place of business abroad, is less clear; I will revert to that point."
"113 In the present case, Arnold J. reviewed the cases, including Pete Waterman, and summarised the position in six propositions of which I need only quote from the fifth and sixth:
"216. Fifthly, it is sufficient for goodwill to exist in the United Kingdom that the claimant has customers or ultimate consumers for his goods here, and for this purpose it is immaterial whether the claimant (a) has some branch here or (b) trades directly with customers here without having any physical presence in the jurisdiction (for example, by mail order) or (c) trades through intermediaries such as importers and distributors (provided that the circumstances are not such that the goodwill is owned by the intermediary) …
217. Sixthly, in the case of claimants who provide services which are physically performed abroad, it is sufficient for goodwill to exist in the United Kingdom that the services are booked by customers from here …"
114 He then pointed out that Browne-Wilkinson VC had gone further, holding that it was sufficient for goodwill to exist in the UK that a foreign service provider has customers here, whether or not their business is placed directly from this country. Arnold J. said that he agreed with this, but that it was not necessary to go further than his sixth proposition in order to decide the case, because there were bookings from this country to Hotel Cipriani, both directly and via travel agents and tour operators. On that basis he held that the first claimant had proved that it had not merely a substantial reputation but also a valuable goodwill in this jurisdiction in respect of the name Cipriani.
116 …, Mr Thorley's remaining argument on passing-off is that either the judge's finding of goodwill on the part of the first claimant was wrong because there was no sufficient business activity or connection in this country, or his failure to find goodwill on the part of the Cipriani group was wrong because he applied the wrong legal test as regards goodwill. In that way his submissions seek to test the question of law as to what is necessary for the reputation of a business abroad and its mark to qualify as goodwill in this country in two ways: first, is what the claimant can show sufficient? Secondly, if it is, why is that which the defendants can show not sufficient (as the judge held)?
117 In Budweiser in relation to sales of beer, the court regarded it as necessary that, in addition to an international reputation, there should have been significant sales of the product in this country. How does the matter stand when one is considering not goods but services? As pointed out by Wadlow in The Law of Passing-off, 3rd ed (2004) at para. 3-80, service businesses are of several different kinds. There are those, such as hotels and restaurants, and recording studios, where the service is supplied at the premises of the supplier. Others may necessarily be supplied at the premises of the customer. Others may be supplied at any suitable place where both supplier and customer are present. Yet others (including much professional advice) may not depend on location at all. The same test may not be appropriate for each kind of service, unless it is expressed at a fairly high level of generality. Wadlow proposes a test as follows:
"It is now suggested that a service business operating from a place or places abroad has customers and therefore goodwill in England to the extent that persons from England consciously seek out and make use of its services in preference to those available from competitors in England or elsewhere. So the foreign business has goodwill here if English residents are prepared to go to it (literally or figuratively) to avail themselves of its services, or if the availability of those services abroad is a material factor in their travelling to wherever the services can be acquired or experienced."
118 That is an interesting proposition which might provide a suitable line of distinction between businesses abroad with a genuinely international reputation and clientele, on the one hand, and those which have English customers abroad, and therefore may be known of in this country, but whose reputation here does not in practice bring in significant custom from the public in England. However, it does not seem to me that it is necessary or appropriate to adopt a general principle such as that in order to decide this appeal. Like the judge, I would hold that the first claimant did have goodwill here on the basis that, in April 2004 (the relevant moment for passing-off) it had a substantial reputation in England and a substantial body of customers from England, in part as a result of significant marketing efforts directed at the relevant public here, and a significant volume of business was placed directly from this country, either by individual clients by telephone or the like, or via travel agents or tour operators. On that basis it seems to me clear that the international reputation of Hotel Cipriani, and the use of the mark Cipriani, was something that brought in business from England — it was an attractive force that brought in English custom - and accordingly the business had goodwill in England at the relevant time.
119 Turning then to the defendants and the Cipriani group, on the judge's findings the defendants showed that Harry's Bar had a significant number of English customers, and that it had a substantial reputation in England, but not that it had a sufficient association with the mark Cipriani. That, therefore, could not justify a finding of goodwill in England in relation to the Cipriani mark.
120 As for the New York Cipriani restaurants, despite some slight reputation in England, they failed to prove any significant English custom at the relevant time. The evidence relied on by the defendants in this respect, to which I have referred at para. above, was very limited and indirect, and I am not surprised that the judge found it of little assistance or persuasive weight. That too, therefore, is inadequate to show that the name Cipriani brought in any worthwhile English custom to the Cipriani restaurants in New York.
121 It seems to me that it must be necessary to show more than this in order to establish goodwill in England for a mark used by a business based abroad for services which it supplies abroad. Therefore, whatever test might be applied to determine whether a business supplying services abroad which has a reputation in England also has goodwill in England, the defendants do not satisfy it."
"Recent cases have made clear that reputation and goodwill are not the same. It is as well to remember, as Oliver LJ re-stated in Anheuser-Busch Inc v. Budejovicky Budvar NP  FSR 413 that goodwill cannot exist in a vacuum, whilst mere reputation may exist without any supporting local business. Moreover, reputation does not constitute property which the law protects."
"35 … For passing off to succeed there must be a misrepresentation about trade origin. Mr Hobbs rightly referred me to the words of Jacob J (as he then was) in Hodgkinson v Wards Mobility  FSR 169 and of the Court of Appeal in Harrods v Harrodian School  RPC 697 about the significance of deception in passing off. Jacob J emphasised that the tort of passing off has never shown even a slight tendency to stray away beyond cases of deception. Millett LJ (as he then was) stated that it was not sufficient to demonstrate that the public would think there was a connection of some kind between the defendant and the claimant, if it is not a connection which would lead the public to suppose that the claimant has made him or herself responsible for the quality of the defendant's goods or articles."
"16 … Sometimes a distinction is drawn between "mere confusion" which is not enough, and "deception," which is. I described the difference as "elusive" in Reed Executive Plc v Reed Business Information Ltd  RPC 40. I said this, :
"Once the position strays into misleading a substantial number of people (going from 'I wonder if there is a connection' to 'I assume there is a connection') there will be passing off, whether the use is as a business name or a trade mark on goods."
17 This of course is a question of degree—there will be some mere wonderers and some assumers—there will normally (see below) be passing off if there is a substantial number of the latter even if there is also a substantial number of the former.
18 The current (2005) edition of Kerly contains a discussion of the distinction at paras 15–043 to 15–045. It is suggested that:
"The real distinction between mere confusion and deception lies in their causative effects. Mere confusion has no causative effect (other than to confuse lawyers and their clients) whereas, if in answer to the question: 'what moves the public to buy?', the insignia complained of is identified, then it is a case of deception."
19 Although correct as far as it goes, I do not endorse that as a complete statement of the position. Clearly if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too—for instance those in the Buttercup case. A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant's goodwill or divert trade from him. I emphasise the word "really."
20 HFC Bank Plc v Midland Bank Plc  F.S.R. 176, … is a case about "mere confusion". The claimant Bank was known, but not very well known, as HFC. It sought to restrain the Midland with its very many branches from changing its name to HSBC. That was said to be passing off. It relied upon some 1,200 instances of alleged deception. Lloyd J. analysed the ten best (pp.189–104). None really amounted to deception. And in any event, given the scale of the parties' respective operations, the totality of what was relied upon was trivial. The case was one on its facts. It decided no question of principle.
21 In this discussion of "deception/confusion" it should be remembered that there are cases where what at first sight may look like deception and indeed will involve deception, is nonetheless justified in law. I have in mind cases of honest concurrent use and very descriptive marks. Sometimes such cases are described as "mere confusion" but they are not really—they are cases of tolerated deception or a tolerated level of deception.
22 An example of the former is the old case of Dent v Turpin (1861) 2 J&H 139. Father Dent had two clock shops, one in the City, the other in the West End. He bequeathed one to each son—which resulted in two clock businesses each called Dent. Neither could stop the other; each could stop a third party (a villain rather appropriately named Turpin) from using "Dent" for such a business. A member of the public who only knew of one of the two businesses would assume that the other was part of it—he would be deceived. Yet passing off would not lie for one son against the other because of the positive right of the other business. However it would lie against the third party usurper."
"31 … whether a geographical name in respect of which application for registration as a trade mark is made designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future.
32. In the latter case, when assessing whether the geographical name is capable, in the mind of the relevant class of persons, of designating the origin of the category of goods in question, regard must be had more particularly to the degree of familiarity amongst such persons with that name, with the characteristics of the place designated by the name, and with the category of goods concerned."