The claimant alleged infringement of his registered trade marks ‘Money Saving Expert’ and associated terms. The defendant operated a service trading as ‘Money Claiming Expert’. Both services included advising those who might wish to claim refunds from banks. The claimant sought summary judgment.
Held: The defence as filed proposed no real defence,merely putting the claimant to proof. However, there remained a real prospect of the defendant establishing for example that it offered different services. Summary judgment of the claim under 10(1) was refused. As to the claim under 10(2), there was no real prospect of the defendant undermining the witnesses who gave evidence of confusion, and summary judgment was allowed under that head.
Norris J
[2011] EWHC 1627 (Ch), [2012] ETMR 6
Bailii
Trade Marks Act 1994 10(1) 10(2), Civil Procedure Rules 24
England and Wales
Citing:
Cited – Lloyd 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 . .
Cited – OCH-Ziff Management Europe Ltd and Another v OCH Capital Llp and Another ChD 20-Oct-2010
The court considered the vaule of evidence of ‘initial interest’ confusion in passing off and trade mark infringement cases. . .
Approved – La Chemise Lacoste SA v Baker Street Clothing Ltd 2010
Geoffrey Hobbs QC set out a summary of the principles when looking to confusion between trade marks: ‘(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through . .
Cited – LTJ Diffusion SA v Sadas Vertbaudet SA ECJ 20-Mar-2003
The Directive protected a trade mark owner against use in the course of trade of ‘any sign which is identical with’ the registered mark.
Held: A use was identical within the article if, when used, it both reproduced without any modification or . .
Cited – Vaseeharan and Another v Uthayaranjan ChD 21-May-2010
Each party sought summary judgment in the case . .
Cited – Office Cleaning Services v Westminster Window and General Cleaning HL 1946
Where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run by him unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is . .
Cited – L’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 . .
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 31 October 2021; Ref: scu.441510