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 largely descriptive small differences may suffice to avoid confusion.
Lord Simonds said: ‘So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be. I am ready to believe that in this case genuine mistakes were made. I think they ought not to have been made. In the Vacuum Cleaner case it appeared that ninety per cent of its customers had addressed the Plaintiffs, in the British Vacuum Cleaner Coy., Ltd as the ‘Vacuum Cleaner Coy’. In spite of this fact and of instances of actual confusion Parker J refused to grant an injunction to restrain the New Vacuum Cleaner Coy., Ltd from using the word ‘vacuum cleaner’ in conjunction as part of its registered or other name. So in Turton v Turton (42 Ch. D. 128) the possibility of blunders by the public was held not to disentitle the defendant form trading in his own name though the plaintiff had long traded in the same name. It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be renered.
I have not troubled your Lordships with many of the numerous cases on this topic. The principles of law are, as I have said, very clear and their application will depend on the facts of each case.’
Judges:
Lord Simmonds
Citations:
(1946) 63 RPC 30
Jurisdiction:
England and Wales
Cited by:
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
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 . .
Cited – Lewis v Client Connection Ltd ChD 6-Jul-2011
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 . .
Cited – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 16 June 2022; Ref: scu.183854