Esure Insurance Ltd v Direct Line Insurance Plc: ChD 29 Jun 2007

Both companies sold motor insurance products at a distance and used as logos and symbols either a telephone or a computer mouse, in each case on wheels. Direct line claimed the use of the mouse by esure infringed its own trademarks, and resisted registration of esure’s trade mark. Esure now appealed a ruling against it’s mark.
Held: Whether there was a similarity could only be decided depends upon why the question is being asked. The threshold for similarity: ‘is arrived at as follows. First, overall impressions of the rival marks are formed, paying full regard to all the requirements of the autonomous concept of 4(1)(b) similarity. Next one has to have in mind the types of confusion which are then relevant, namely those identified in Sabel. Then the threshold question arises: are those overall impressions such that one can reasonably say that a likelihood of confusion could not thereby be created? ‘
Lindsay J
[2007] EWHC 1557 (Ch)
Trade Marks Act 1994, First Council Directive 89/1004
England and Wales
CitedPro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .
CitedMehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
CitedBessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
CitedHachette Filipacchi Presse Sa v S Aprotex International (Proprietary) Ltd ChD 24-Jan-2007
Both parties used the name ‘Elle’ in their respective products, a women’s magazine, and handknitting yarns. They disputed the registration of a trade mark for the latter in the UK.
Held: The court endorsed the continuing applicabiity of the . .
CitedPiglowska v Piglowski HL 24-Jun-1999
When looking to the needs of parties in a divorce, there is no presumption that both parties are to be left able to purchase alternative homes. The order of sub-clauses in the Act implies nothing as to their relative importance. Courts should be . .
MentionedBritish Sugar plc v James Robertson and Sons Ltd 1996
Use ‘in the course of trade’ means use by way of business and does not just mean use as a trade mark. . .
CitedSabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
CitedIntel Corporation v Sihra ChD 2003
The court considered the observations of Pumfrey J in the Chrysler case as requiring proof of real future unfair advantage or detriment and not merely risk, and emphasised both the need for a causal connection between similarity on the one hand and . .
CitedValucci Designs Ltd v IPC Magazines 22-Sep-2000
The parties disputed the validity of registrations of Trade Marks for the word ‘Loaded’.
Held: This was a case of ‘non-confusing’ uses. . .
CitedLloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
CitedMarca Mode CV v Adidas AG ECJ 22-Jun-2000
The reputation of a trade mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense.
Europa Article 5(1)(b) of First Directive . .
CitedVedial v OHMI, France Distribution ECJ 12-Oct-2004
Europa Community trade mark – Review procedures – Review before the Community Courts – Procedural role of the Office – Opposition proceedings – No power to alter the terms of the dispute before the Court of First . .
CitedO2 Holdings Ltd and Another v Hutchison 3G UK Ltd ChD 11-Mar-2005
The idea of the ‘average consumer’, the arbiter of similarity in trade mark disputes, is a legal construct which tends to emphasise that similarity is an autonomous concept of European law. Similarity and likelihood of confusion are intimately bound . .
CitedL’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
CitedSoffass v OHMI-Sodipan (Nicky) ECFI 23-Nov-2005
ECFI Community trade mark – Opposition proceedings – Application for Community figurative mark containing the verbal element -‘NICKY’ – Earlier national figurative marks containing the verbal element – ‘NOKY’ – . .
CitedHachette Filipacchi Presse Sa v S Aprotex International (Proprietary) Ltd ChD 24-Jan-2007
Both parties used the name ‘Elle’ in their respective products, a women’s magazine, and handknitting yarns. They disputed the registration of a trade mark for the latter in the UK.
Held: The court endorsed the continuing applicabiity of the . .
CitedL’Oreal SA v OHIM, Revlon (Switzerland) SA intervening ECJ 27-Apr-2006
The court considered what would amount to similarity beween two trade mark signs.
Held: So far as concerns the assessment of similarity, what must be concentrated on is the perception of the relevant public. As to a complex mark, that the . .
CitedRuiz-Picasso and Others v OHIM and DaimlerChrysler AG ECJ 12-Jan-2006
ECJ Appeal – Community trade mark – Article 8(1)(b) of Regulation (EC) No 40/94 -? Likelihood of confusion – Word mark PICARO – Opposition by the proprietor of the Community word mark PICASSO.
Adopting . .

Cited by:
Appeal fromesure Insurance Ltd v Direct Line Insurance plc CA 23-Jul-2008
Where in a claim for passing off, evidence from a consumer survey was to be required, it was incumbent on the parties to ensure that such a survey was carried out well in advance to make sure that it was available for the trial. An expert’s skills . .

These lists may be incomplete.
Updated: 03 February 2021; Ref: scu.253763