Scottish Court of Session Decisions

OUTER HOUSE, COURT OF SESSION [2011] CSOH 123
A344/11	OPINION OF LORD GLENNIE in the cause SCHUH LIMITED Pursuer; against SHHH... LIMITED Defender: ­­­­­­­­­­­­­­­­­________________

Pursuer: Sandison QC; Morton Fraser LLP

Defender: Walker; Maclay Murray & Spens

26 July 2011

[1] The pursuers were incorporated in Scotland in September 1990. Since then they have traded as retailers of footwear and associated goods and services. They now have 75 stores in the British Isles, 12 of which are in Scotland (including 3 in Edinburgh and 4 in Glasgow). Since 2009 they have also retailed shoes via their internet site with the address "www.schuh.co.uk". They currently sell 43 brands of women's shoes and 73 brands of men's shoes, including in both cases fashion and "designer" brands. They have won numerous awards. They trade under reference to the name "Schuh", which is the name by which they are commonly known by customers and others dealing with them.

[2] The pursuers are the holders of UK Trade Mark Registration No. 2408794 in Vienna classes 3, 9, 16, 21, 25, 28, 35 and 42 in the mark "SCHUH" and CTM Registration No. 001120310 in that mark in those classes and in Nice class 25. In the CTM Registration the mark is depicted in the graphic representation as the word "schuh" in lower case (with the letter "s" fractured in the middle) in light letters standing out against a dark background, all within an oval. Vienna class 25 includes shoes and footwear, while class 35 includes "the bringing together, for the benefit of others, of a variety of goods", including footwear, "enabling customers to conveniently (sic) view and purchase clothing". Nice class 25 comprises footwear, other than for motorcycles. The pursuers aver that registration of the UK mark was granted expressly on the basis that the sign had, prior to its registration, acquired a distinctive character in the UK through its use by the pursuers.

[3] The word "schuh" is German for "shoe" and is pronounced "shoe". The pursuers aver, however, that a substantial proportion of their English speaking customers mispronounce it in various ways, including pronouncing it as "shush". Accordingly, so the pursuers aver, both the word "schuh" and also its various homophones and (mispronounced) near homophones have, when used in connection with the retail of footwear and ancillary goods and services, become distinctive of the retail footwear and ancillary goods business carried on by the pursuers.

[4] The pursuers' averments set out above were not challenged by the defenders on this application and for the purpose of reaching my decision I take them pro veritate.

[5] In this action the pursuers seek to interdict the defenders from infringing their registered trademark "Schuh" by using in the course of their trade the signs "Shhh", "shhh-oohs" or other colourably similar names in relation to the retail of footwear and associated goods and services (Conclusion 1); and, further, to interdict them from passing off their trade as a footwear retailer as being that of or connected with the pursuers, or authorised by them, by using the words "Shhh" or "shhh-oohs" or other colourably similar words or names thereto, in the course of or incidental to their trade (Conclusion 2).

[6] The pursuers have moved the court for interim interdict in terms of the first and second conclusions. No caveat having been lodged, the pursuers initially applied ex parte, as was their right. I continued the motion until the following day to allow the defenders to be heard. I took the view that, although the pursuers were entitled in the absence of a caveat to apply ex parte, the court should be slow to grant interdict without affording the defenders an opportunity to be heard except in the (probably rare) case where the pursuer can demonstrate a real risk that, if the defenders were given notice of the application, they might take steps before the hearing of the motion which would be irretrievably prejudice the pursuers' position, for example by doing the very thing which was sought to be interdicted. This approach is not only one of elemental fairness but is justified by reference to the balance of convenience which must always be considered on any application - the question on an application made ex parte is not only whether the balance of convenience lies in favour of granting interdict but also whether that balance of convenience lies in favour of doing so without giving the defenders an opportunity of being heard, a question which can seldom be answered in the affirmative unless such a risk can be demonstrated. I note, although I do not base my opinion on this, that this approach is now reflected also in the statutory provisions regulating applications for diligence on the dependence: see s.15E(2)(b) of the Debtors (Scotland) Act 1987. At the continued hearing the defenders sought more time in order to lodge evidence and the motion was continued on the basis of an undertaking given by the defenders to the court which safeguarded the position until the continued hearing.

[7] The defenders are a company associated with and, so the pursuers aver, controlled by, Steven Moffat. Initially the action was raised against him, but it became apparent from an Affidavit by him lodged in process that the business to which the pursuers object was intended to be carried on by the defenders. The summons was accordingly amended of consent to substitute the present defenders for Mr Moffat. Nothing now turns on this. The pursuers aver that Mr Moffat and/or the defenders propose to open a chain of shoe shops in Edinburgh, Glasgow and a number of cities in England under the trading name "Shhh" and with a website, which is already operational, performing a promotional and advertising function for the proposed business with the URL "www.shhh.oohs.co.uk".

[8] The pursuers say that the proposed use by the defenders in the course of trade of the sign "Shhh", "shhh-oohs" or other colourably similar word or name in relation to the retail of footwear and associated goods and services would constitute the use of a sign which is similar to the pursuers' trade marks in relation to goods and services identical to those for which the trade marks were registered; and would be likely in the circumstances averred by them to cause confusion on the part of the public, including confusion by way of association of the goods and services to be offered by the defenders under reference to their proposed trading style with the goods and services already being offered by the pursuers under their mark. That is their case under s.10(2) of the Trade Marks Act 1994. Further, they say that the proposed use by the defenders, in the course of trade and in relation to the said goods and services, of those signs or other colourably similar signs would in the circumstances take unfair advantage of or be detrimental to the distinctive character or repute of the pursuers' UK trade mark, which mark has an established and recognised reputation in the UK. That is their case under s.10(3) of the Act. The pursuers also put forward a case of passing off. They say that the use by the defenders words "Shhh", "shhh-oohs" or other colourably similar words in connection with the provision of the defenders' proposed footwear retail business in the UK would in the circumstances constitute an unlawful passing off of that business as that of, or as otherwise associated with or endorsed by, the pursuers, which is likely to cause the pursuers to suffer substantial damage to the business goodwill built up by them under reference to the word "Schuh" in the UK, by unwitting diversion of existing or potential customers from the pursuers to the defenders, by unwanted and potentially adverse association in the minds of customers of the two businesses, and by loss or dilution of the attractive distinctiveness of the name by which the pursuers' business has long been carried on.

[9] The nature of the defenders' proposed business was explained by Mr Moffat in an Affidavit lodged in process by the defenders. The factual contents were not in dispute (though his opinions on the question of similarity and risk of confusion were not accepted). Mr Moffat explained that in about November 2010 he identified a niche in the retail shoe market for high end ladies only designer shoes. His idea was to create a wholly new type of luxury and exclusive consumer retail experience and differentiate it from the traditional form of High Street retail outlet. The outlets would be in more obscure and unobtrusive locations. Even though he was considering premises in Princes Street, Edinburgh, those premises would be open onto Princes Street only by a small doorway set between two large shops, so that consumers could easily walk past it without realising that it was there. Customers would not just walk into the shops from the street; via marketing activities (including Facebook and other internet viral marketing) or by introduction through friends, they would be invited to come, in groups of no more than 2-6 female clients. There would be exclusive events by guest list only. The focus would be on the sale of premium couture brands. The retail outlets would be wholly different to those used by the pursuers and other shoe retailers, in that the shop fit would be more like a 5 or 6 star hotel rather than a shop, with a receptionist, private VIP rooms, a champagne bar and staff more like waiters than shop assistants. The idea of the brand "SHHH..." was designed to attract a more sophisticated clientele by conjuring up an image of exclusivity and premium quality, the "shhh..." (as with a finger over the lips to indicate secrecy) suggesting the idea of exclusive goods being made available through hidden outlets only to those in the know. The defenders were incorporated in April 2011 with the name "Shhh... Limited" as the vehicle to carrying through this idea. They have applied for UK registered trademarks for "SHHH..." and in the name "Shhh Limited".

[10] Mr Moffat denied that the two marks were similar. He pointed out that the two words were pronounced differently, were spelt differently, looked different and conjured up a very different concept. He said this about "Shhh...":

"It is not even a whole word as such. It is highly distinctive in its own right and has no relevance at all at first sight to shoes as such. SCHUH on the other hand is descriptive of shoes as being the German word for 'shoe' and indeed is pronounced 'shoe'. To me, SHHH... is a secret. SCHUH is a shoe."

He also denied that there was any likelihood of confusion. The brands of shoes to be sold by the defenders had an entry price of £110 with a top end of £1,400 per pair of shoes and £2,500 for a pair of boots. There were no brand crossovers with the shoes retailed by the pursuers, which sold at prices of up to about £120 (though Ugg boots were sold at about £200). Indeed, he believed that none of the brands which the defenders proposed to sell were available for sale in any retail outlet in Scotland.

[11] The defenders use the domain name "shhh-oohs.co.uk". It was chosen because "shhh.co.uk" was already registered to someone else. He explained that the first part, "shhh", reflected the name of the company and the brand; the "ooh" denoted pleasure after being surprised at the secret, and fitted the overall branding concept of exclusivity and secrecy. He pronounced it "shhh" - "oohs" in two parts, but chose it in part because it could be pronounced as "shoes". The defenders had now applied to register a new domain name "shhh.ltd.uk", which was closer to the company name, and intended to move to it as soon as possible. Sales from the internet site would also be to members only, with clients requiring to register before they can buy. Extracts from the website were lodged in process. They show the word "Shhh..." in translucent print across a photograph of high end fashion shoes worn by models, the letters decreasing in size as the word progresses, conveying a dreamy image. Marketing material also lodged in process shows, in one case, the word "Shhh..." in wavy lettering, also decreasing in size, with a sepia style photograph of a girl holding a shoe to her head; and, in another case, the word "shhh" spelt out vertically down a woman's finger held to her lips, fostering the image of secrecy referred to in para.[9] above.

[12] The test for the grant of interim interdict is well established. First, the pursuers must establish that they have a prima facie case on the merits or, as it is sometimes put, that they have put forward "a case to argue and a case to answer": Reed Stenhouse (UK) Ltd. v Brodie 1986 SLT 354, cited with approval in Toynar Ltd. v Whitbread & Co. plc 1988 SLT 433. They must establish that on the information laid before the court they appear to have "reasonable prospects" of establishing a right to interdict at proof: see Toynar Ltd. v Whitbread (supra) and WAC Ltd v Whillock 1989 SC 397, 410. If that is established, they will then have to show that the balance of convenience favours the grant of interdict. Further, in assessing where the balance of convenience lies, a Scottish Court may have regard to the relative strength of the cases put forward by each party at the interlocutory stage as one of the many factors going to make up that balance (see per Lord Fraser of Tullybelton in NWL Limited v Woods [1979] 1 WLR 1294 at p.1310, a passage approved and applied in Boehringer Ingelheim GmbH v Munro Medical Supplies Limited 2004 SC 468), with the caveat that it is neither possible nor appropriate at an interim stage to weigh in a fine balance the respective strength of the parties' cases, so that the merits of the parties' cases is only likely to affect the balance of convenience where it can be seen at the interim stage that one party or the other is very likely to succeed at the end of the day: per Lord Hamilton in Boehringer at para.[16]. An assessment of the merits is most likely to be a factor in determining the fair disposal of the motion for interdict in a case where the grant or refusal of interim interdict is likely, in practice, finally to determine the litigation.

[13] Mr Walker, for the defenders, brought to my attention my Opinion in Ralph Lauren London Limited v The Mayor and Burgesses of the London Borough of Southwark as Trustee of the London Borough of Southwark Pension Fund [2011] CSOH 103, where I indicated, in agreement with Lord Brodie in Cowan v Royal Bank of Scotland plc [2011] CSOH 85 at para.[11], that the expression "prima facie case" as the hurdle to be overcome for the grant of interim interdict now fell to be understood in light of the decision of the Inner House in Gillespie v Toondale Ltd 2006 SC 304. My decision in Ralph Lauren was reversed by the Inner House. Although no Opinion of the court has yet been forthcoming in that case, it would be unsafe to rely upon what I said there, and I do not do so. Having considered the matter further, I do not think that the point is ultimately of any materiality. No such gloss on the expression "prima facie case" is necessary in the context of motions for interim interdict and reference to Gillespie v Toondale in that context is liable to generate unnecessary confusion. That is because the threshold to be overcome for grant of interim interdict is already equivalent to that of good arguable case. In contrast to the test for interim interdict, it had until recently been thought that an applicant for diligence on the dependence needed to do little more than present a stateable or colourable case. Gillespie v Toondale, building upon other recent decisions referred to in the judgment of the court, made it clear that more than that was required. As appears from paras.[12] and [13], the court was there drawing a distinction, in the context of the grant of diligence on the dependence, between, on the one hand, a merely "colourable case" and, on the other, a prima facie case, the latter being equated with the "good arguable case" test which Lord Drummond Young, in the passage quoted in para.[12], understood to be the test applied by the English courts in relation to Mareva injunctions, now freezing orders. For what it is worth, my understanding is that the test of "good arguable case" is applied in England not only in respect of freezing orders but in relation to all interlocutory injunctions, the test (albeit a "flexible" one) being no higher or lower in the case of freezing orders than in other cases; but that does not matter for present purposes. The court in Gillespie v Toondale emphasised the requirement, in the context of an application for diligence on the dependence, to show a prima facie or good arguable case and not just one that was colourable. That test equates, in substance, to the test of prima facie case applied in Scotland in the case of interim interdict. Gillespie v Toondale therefore brought the test for the grant of diligence on the dependence into line with that for interim interdict. There is, therefore, no need, in the context of motions for interim interdict, to gloss the test of prima facie case by reference to Gillespie v Toondale in the manner suggested by Lord Brodie and myself, since it has always been the case that a pursuer seeking interim interdict requires to show a prima facie or good arguable case, i.e. to show that he has "reasonable prospects" of establishing a right to interdict at proof. Where material is put forward by the defenders in opposition to the motion, whether by way of defences or productions or statements made at the bar, that material will obviously have to be taken into account in assessing whether the pursuer has shown such a case.

[14] The pursuers' trade mark case is based upon the provisions of s.10(2) and (3) of the Trade Marks Act 1994 as amended. These sub-sections are in the following terms:

"(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because -

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which -

(a) is identical with or similar to the trade mark ...

...

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

Following the language of Article 9(1)(c) of the Community Trade Mark Regulation (Council Regulation 207/2009 of 26 February 2009 on the Community Trade Mark) on which it was based, sub-section (3) originally restricted its application to a case where the goods or services were not similar to those for which the trade mark was registered. It was amended to remove that restriction in light of the decision of the European Court of Justice in Davidoff & Cie SA v Gofkid [2003] ECR I-389 on the proper interpretation of Article 9(1)(c). Accordingly there is now considerable scope for overlap between the two sub-sections.

[15] I deal first with the claim under s.10(2). There was no dispute between counsel as to the approach to be adopted in relation to this section. Mr Walker referred me to a number of passages in A Practical Approach to Trade Mark Law by Amanda Michaels (2010). There is no significant difference between the commentary there set out and the summary of the principles recently and helpfully set out by Henderson J in 32Red Plc v WHG (International) Ltd. [2011] EWHC 62 (Ch). At paras 89-92 he explained the approach to s.10(2), though he did so under reference to Article 9(1)(b) of the Community Trade Mark Regulation from which s.10(2) derives. He said this:

"89. In their opening written submissions counsel for 32Red summarised the task that the court has to undertake in this way:

'The similarities between the marks and signs at issue must be assessed on a visual, aural and conceptual level. In each case the court must take into account the distinctive and dominant components of the mark and sign, but the comparison is of the overall impression given. Furthermore the comparison is not to be undertaken as if the mark and sign in question were side by side but must take into account the imperfect memory of the observer.'

Two of the leading cases in the ECJ were cited as authority for these propositions: Case C-251/95 Sabel BV v Puma AG
[1997] ECR I-6191,
[1998] RPC 199 and Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV
[1999] ECR I-3819,
[2000] FSR 77. Other important decisions of the ECJ in this area include: Case C-39/97 Canon Kabushiki Kaishi v Metro-Goldwyn-Meyer Inc
[1998] ECR I-5507, Case C-425/98 Marca Mode CV v Adidas AG
[2000] ECR I-4861 and Case C-3/03 Matratzen Concord GmbH v Office for Harmonisation in the Internal Market [2004] ECR I-3657.

90. On the basis of these and other leading authorities a compendious summary of the principles to be followed has been developed by the Trade Marks Registry. One such summary is quoted in the written submissions of counsel for William Hill Online. I propose to quote the very similar, but more recent, summary adopted by Geoffrey Hobbs QC sitting as the Appointed Person in La Chemise Lacoste SA v Baker Street Clothing Ltd (O/330/10), which has itself been cited with approval by Arnold J in Och-Ziff Management Europe Limited and another v OCH Capital LLP and others
[2010] EWHC 2599 (Ch), judgment in which was handed down on 20 October 2010 (the last day of the hearing before me) at [73]:

'(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.'

91. Counsel for William Hill Online also rely on the guidance given by the Court of Appeal in Reed Executive Plc v Reed Business Information Ltd
[2004] RPC 40, where the leading judgment was given by Jacob LJ (with whom Rix and Auld LJJ agreed). Jacob LJ said this at [82] to [86]:

'82. Next the ordinary consumer test. The ECJ actually uses the phrase 'average consumer' (e.g. Lloyd paras [25] and [26]). The notion here is conceptually different from the 'substantial proportion of the public' test applied in passing off (see e.g. Neutrogena Corp v Golden Ltd [1996] R.P.C. 473). The 'average consumer' is a notional individual whereas the substantial proportion test involves a statistical assessment, necessarily crude. But in the end I think they come to the same thing. For if a 'substantial proportion' of the relevant consumers are likely [to] be confused, so will the notional average consumer and vice versa. Whichever approach one uses, one is essentially doing the same thing - forming an overall ('global') assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptional over-elaboration is apt to obscure this and is accordingly unhelpful. It may be observed that both approaches guard against too "nanny" a view of protection - to confuse only the careless or stupid is not enough.

83. Finally, although I agree with the judge's questioning of the Court's proposition of fact that 'there is a greater likelihood of confusion with very distinctive marks' there is some truth with the opposite proposition. The Court in Lloyd said:

'23. In determining the distinctive character of a mark, and accordingly in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings.

24. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which is has been registered; ..."

84. The last sentence is an acknowledgement of a fact that has long been recognised: where a mark is largely descriptive 'small differences may suffice' to avoid confusion ... This is not a proposition of law but one of fact and is inherent in the nature of the public perception of trade marks.

85. It is worth examining why that factual proposition is so - it is because where you have something largely descriptive the average consumer will recognise that to be so, expect others to use similar descriptive marks and thus be alert for detail which would differentiate one provider from another. Thus in the cited case 'Office Cleaning Association' was sufficiently different from 'Office Cleaning Services' to avoid passing off.

86. The same sort of consideration applies when there is use of two common surnames, as in this case. The average consumer will be alert for differences - just in the same way as one distinguishes W H Smith from other Smiths by the initials. That is of importance here in making the global assessment.'

92. In relation to propositions (d) to (f) in the Trade Marks Registry summary, counsel for William Hill Online also cautioned me against assessing the similarity and likelihood of confusion on the basis of a comparison of only one component of a composite mark. As the ECJ has more than once emphasised, the comparison must be made by examining the marks in question as a whole, even if the overall impression conveyed by a composite mark may be dominated by one or more of its components."

[16] The sign used by the defenders is clearly not identical with the pursuers' trade mark. The question is whether it is similar. That has to be assessed on a visual, aural and conceptual level, taking account of the distinctive and dominant components or each but ultimately having regard to the overall impression given. Mr Sandison QC, for the pursuers, submitted that that was a mixed question of fact and law. In so far as it was a question of fact, it was a jury question which depended upon an assessment of evidence to be led at proof. The court should distrust its own reactions on such matters. I accept that. But it does not follow that the court must abstain from any critical consideration and simply accept that, because the pursuers aver that the signs or marks are similar, they have made out a prima facie case to that effect. At the stage of application for interim interdict, the court must assess whether, on the information laid before the court, the pursuers appear to have reasonable prospects of establishing their right to interdict. That involves assessing whether, on the information laid before the court, the pursuers appear to have reasonable prospects of establishing that the two signs or marks are similar. Having considered the material before me and the submissions of counsel, I do not consider that they have made out a prima facie case in this sense. My reasons for arriving at this conclusion are substantially those advanced by Mr Moffat in the passage from his Affidavit cited at para.[10] above. Visually the words look different, even without taking account of the differences in visual presentation between the word "schuh" as shown in the pursuer's CTM Registration (and on their website, also lodged in process by the defenders) and the word "Shhh..." as it appears in the defenders' material. Not only are they spelt differently, but they give a different impression, the pursuers' mark being closed in contrast to the open-ended expectancy suggested by the "..." at end on the "Shhh". Aurally they sound different, even if account is taken of the frequent mispronunciation of their name adverted to by the pursuers. Conceptually they are very different. As Mr Moffat put it, "SHHH... is a secret. SCHUH is a shoe." The risk of confusion, with which I deal briefly below, is, of course, relevant to the question of similarity, but I consider there is no real risk of confusion here. I can see no reasonable prospect of the pursuers establishing that the signs or marks should be regarded as similar.

[17] In reaching this view I have not paid any regard to evidence adduced by Mr Moffat in his Affidavit that the UK Intellectual Property Office (UKIPO), which apparently conducts searches of existing registered UK marks prior to publication of trade mark applications to identify those which appear to be similar to that which is applied for, did not identify the pursuers' mark as being one which appeared to be similar. There was insufficient evidence before me as to the enquiries undertaken by UKIPO in this regard or the approach they took to assessing similarity of marks.

[18] Had I formed the view that the defenders' sign and the pursuers' mark were similar, I would have had to consider, for the purposes of s.10(2), whether the defenders' sign was used in relation to goods or services similar to those for which the pursuers' trade marks were registered. Although, on the evidence before the court, there seems to be little overlap between the shoes sold by the pursuers and those intended to be sold by the defenders, the pursuers registered trade marks are in terms wide enough to include all manner of footwear, including high end fashion footwear of the type proposed to be sold by the defenders. The question of similarity must be approached by reference to the entire range of goods potentially covered by the registered trade mark: see Discovery Communications Inc. v Discovery FM Ltd 2000 SC 69. On that basis, I am satisfied, at least to the standard of prima facie case, that the defenders' sign and the pursuers' mark are being (or to be) used in relation to similar goods.

[19] The third matter relevant to the claim under s.10(2), had I been persuaded that the pursuers had shown a prima facie case on similarity, is the likelihood of confusion. That is, in the event, irrelevant by my decision that the pursuers have not shown a prima facie case that the signs or marks are similar. But even if I had been persuaded that they were (arguably) similar, it is nonetheless difficult to see what confusion is likely to arise in the mind of the reasonably well-informed, circumspect and observant average consumer with the characteristics set out in para.90 of Red32. In reaching this decision, I have regard to the various considerations referred to by Henderson J in that paragraph. An overall (global) assessment must be made. It is the overall impression which matters more than the details. None of those considerations appear to me to point to a likelihood of confusion. Even if a customer of the pursuers mispronounces their name as "shush", I see no real likelihood that he will confuse "shush" as a mere mispronunciation of the bare name "schuh" with the "shhh..." used by the defenders in their sign to suggest intimacy and secrecy.

[20] I would add these two additional points. The first is that infringement under s.10(2) relates to the use of a sign by the defender in the course of a business where, because of similarity in the sign and the goods being sold, there exists a risk of confusion. As the sub-section makes clear, the way in which the sign is used is material to this question. Here the defenders' use of the sign is wholly different from the pursuers' use of their mark. The whole advertising, marketing and retailing strategy is, to my mind, so different, that there can be no realistic risk of confusion arising in the minds of customers or potential customers either on the pursuers or of the defenders. I refer to the evidence given by Mr Moffat of the defenders' intended operation. In addition, and this is the second point, it seems to me that in assessing the risk of confusion at this stage, it must be relevant to observe that the pursuers do not presently retail shoes or boots at the high end fashion range at which the defenders' activities are directed. Although this is irrelevant to the question of whether the goods retailed by the defenders are similar to those covered by the pursuers' trade mark, it must in my opinion be relevant to the question of confusion. However, for the avoidance of doubt, I should make clear that these are merely additional observations. I do not base my decision on the likelihood of confusion on them.

[21] I therefore reject the claim based on s.10(2) of the Act.

[22] The claim based on s.10(3) must similarly fail in the absence of a prima facie case that the defenders' sign and the pursuers' mark are similar.

[23] Had I found that the pursuers had made out a prima facie case that they were similar, I would have had to consider whether the defenders' use of their sign took unfair advantage of or was detrimental to the distinctive character or repute of the pursuers' mark. In para.129 of 32Red, Henderson J referred to the three distinct types of injury against which protection is provided under s.10(3), viz: (1) detriment to the distinctive character of the earlier mark; (2) detriment to the repute of that mark; and (3) unfair advantage taken of the distinctive character or repute of that mark. Any one of the three types of injury is enough for the provision to apply. In paras.130-131 he said this:

"130. In paragraph 68 [of its decision in Intel Corp Inc v CPM United Kingdom Ltd [2008] ECR I-8823] the Court held that the likelihood of one of the types of injury 'must be assessed globally, taking into account all factors relevant to the circumstances of the case', including the criteria listed in paragraph 42 of the judgment. Those criteria are:

(a) the degree of similarity between the conflicting marks;

(b) the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;

(c) the strength of the earlier mark's reputation;

(d) the degree of the earlier mark's distinctive character, whether inherent or acquired through use; and

(e) the existence of the likelihood of confusion on the part of the public.

131. The Court also had this to say about the first type of injury, namely detriment to the distinctive character of the earlier mark:

'76. Thirdly, as was stated in para 29 of this judgment, detriment to the distinctive character of the earlier mark is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.

77. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.

78. It is immaterial, however, for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark.'

It will be seen, therefore, that evidence of a change in economic behaviour is needed in order to establish injury of the first type."

[24] To show that the use of the sign "Shhh..." would be detrimental to the distinctive character or repute of the pursuers' mark would require the pursuers to show a real ("serious") likelihood of a change in economic behaviour by customers of the pursuers switching away from the pursuers' goods (whether or not they switch to the defenders' goods). There is in the Summons a bare averment that the proposed use by the defenders of their mark would be detrimental to the distinctive character or repute of the pursuers' mark, but no averment of a likely change of economic behaviour in some such way. If such a change were anticipated, I would expect there to be a detailed averment to that effect supported by evidence, even if only opinion evidence of someone well versed in the business. In any event, looking to the factors mentioned in Red32, I must assume (contrary to my earlier finding) that there is some similarity, otherwise I would not get to this stage, but any similarity is very slight. I have found no likelihood of confusion, but if there is any it must again be very slight, particularly having regard to the dissimilarity between the goods and services for which the rival signs or marks are used. Whilst I accept that there is overlap between the goods to be sold by the defenders and those covered by the pursuers' mark, the lack of any overlap in the goods currently or intended to be sold, as well as the wholly different nature of the business and its marketing must weigh heavily against the risk of confusion as matters stand at present. I am not able to find that the pursuers have made out a prima facie case on this point.

[25] As to the argument that the defenders would be taking unfair advantage of the distinctive character of the pursuers' mark, a form of "piggy backing", this argument is supported only by the barest of averments in the summons. My findings as to similarity and confusion mean that it must fail.

[26] There remains the case based on passing off. I need say little about this. In the absence of similarity between the two marks and in the absence of any real likelihood of confusion, the pursuers cannot show a prima facie case under this head either.

[27] Had I formed the view that the pursuers' had shown a prima facie case I would have had to consider the balance of convenience. I would have done so on the basis that they had just scraped over that threshold. On that basis I would still have refused interim interdict. I accept, of course, that the starting point is usually to maintain the status quo ante, which would mean restraining the defenders by interim interdict, but I do not consider that that would be the correct approach in this case. My reasons can be stated briefly. First, I would have judged the likely impact on the pursuers of the defenders' proposed activities by reference to what the defenders proposed to do and how it might impact on what the pursuers actually do. Seen in this way, although there might be an argument (contrary to what I have held) that there was a risk of confusion, the differences between the two operations, the manner of selling and the goods presently sold or intended to be sold, mean that in practice it is hard to see any real possibility of the pursuers suffering damage as a result of the defenders' proposed business using the sign "Shhh...". The pursuers are unlikely to suffer any damage. Second, by contrast with this, for the reasons set out in Mr Moffat's Affidavit, the grant of interdict will render the defenders' intended business still born. The stock already ordered will cease to be fashionable by the time any proof could be heard. The expenditure on stock and advertising, on building up anticipation in the minds of the public, will all be wasted. I am satisfied that the defenders are likely to suffer irreparable damage if interdict were granted. It would be the end of that business. Third, and in any event, the grant or refusal of interdict in this case is likely to be the end of the matter, certainly if interdict is granted since the defenders business will collapse. It is permissible in such circumstances to have regard to the likely outcome of the case, at least where the merits fall heavily on one side rather than the other. Even if, contrary to my view, the pursuers can show a prima facie case, I consider that case to be so weak that it would be wrong to impede and risk destroying the defenders'' business on that account.

[28] For all these reasons, I refuse the motion for interim interdict. I shall reserve all questions of expenses.