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Intellectual Property Enterprise Court |
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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> The Comptroller-General of Patents, Designs and Trade Marks & Anor v Intellectual Property Agency Ltd & Anor [2015] EWHC 3256 (IPEC) (10 November 2015) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2015/3256.html Cite as: [2015] EWHC 3256 (IPEC) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
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THE COMPTROLLER-GENERAL OF PATENTS, DESIGNS AND TRADE MARKS THE SECRETARY OF STATE FOR BUSINESS, INNOVATION AND SKILLS |
Claimants |
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- and - |
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INTELLECTUAL PROPERTY AGENCY LIMITED HARRI MATTIAS JONASSON |
Defendants |
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The Defendants were not represented and did not appear
Hearing date: 29 September 2015
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Crown Copyright ©
Judge Hacon :
The Trade Mark is registered in respect of, among other things, the following services in Class 45:
On-line information relating to intellectual property; investigation, identification and monitoring of intellectual property; professional consultancy services relating to intellectual property; provision of data relating to intellectual property; advice and information relating to intellectual property; advisory services relating to intellectual property protection."
Passing off
Whether goodwill subsists
"goodwill and reputation in intellectual property services, including renewal services, which is exclusively associated in the minds of the relevant trade and public with the names and marks INTELLECTUAL PROPERTY OFFICE and IPO."
Ownership of the goodwill
Misrepresentation
"I had in all innocence thought, after checking your website, that you were the official Patent Office agency and was obliged to pay you the exorbitant sum of £1280."
"I was sent a form suggesting that I needed to renew my patent.
I naively assumed it was from you and duly signed the order.
I have now received an Invoice for £739 pounds which I have not paid.
As per your website I am sending you copies of the reminder and invoice."
"Our company has unfortunately been taken in by a trade mark renewal company calling themselves the Intellectual Property Agency, which of course we took to be the Intellectual Property Office.
We have paid this company an amount of £1280.00 for 4 renewals which should only costs us £350.00. Whilst I realise they have done nothing illegal as we received and returned their reminder and paid their invoice, we only did so as we mistakenly thought we were dealing with yourselves."
"Please as per a telephone conversation with your Office, find enclosed a Reminder form that on appearance, I thought was indeed from your Office. The sum of the Renewal figure is the only reason I refrained from signing. I remember this figure being £250 and seemed too long in advance to send a reminder. I went to ring the number on the reminder but while the name of the Company was similar, instinct told me this was not your Office. I otherwise would not have hesitated to sign and return the form in the Envelope provided also by this company."
"I enclose a copy of my letter to your office dated 18.11.13. Please be advised that I have never knowingly agreed to a service other than with the Intellectual Property Office. I therefore dispute your invoice and repeat my request repayment of £759.00."
Damage
Conclusion
Trade Mark infringement
"[32] Infringement under art.9(1)(b) requires the offending sign and mark to be identical or similar. Infringement occurs where there is a likelihood of confusion caused by the identity or similarity of the mark and sign and the identity or similarity of the goods.
[33] There is much CJEU learning on the interpretation and application of art.9(1)(b). In Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] ETMR 17; [2012] FSR 19 at [52] Kitchin LJ approved the following summary of the principles to be derived from the court's jurisprudence:
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; and
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.
[34] In making the global comparison the sign is to be considered in the context in which it is used. Kitchin LJ made this point in Specsavers [2012] FSR 19 at [87]:
"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."
"[18] The judgment in Bimbo confirms that the principle established in Medion v Thomson is not confined to the situation where the composite trade mark for which registration is sought contains an element which is identical to an earlier trade mark, but extends to the situation where the composite mark contains an element which is similar to the earlier mark. More importantly for present purposes, it also confirms three other points.
[19] The first is that the assessment of likelihood of confusion must be made by considering and comparing the respective marks – visually, aurally and conceptually – as a whole. In Medion v Thomson and subsequent case law, the Court of Justice has recognised that there are situations in which the average consumer, while perceiving a composite mark as a whole, will also perceive that it consists of two (or more) signs one (or more) of which has a distinctive significance which is independent of the significance of the whole, and thus may be confused as a result of the identity or similarity of that sign to the earlier mark.
[20] The second point is that this principle can only apply in circumstances where the average consumer would perceive the relevant part of the composite mark to have distinctive significance independently of the whole. It does not apply where the average consumer would perceive the composite mark as a unit having a different meaning to the meanings of the separate components. That includes the situation where the meaning of one of the components is qualified by another component, as with a surname and a first name (e.g. BECKER and BARBARA BECKER).
[21] The third point is that, even where an element of the composite mark which is identical or similar to the earlier trade mark has an independent distinctive role, it does not automatically follow that there is a likelihood of confusion. It remains necessary for the competent authority to carry out a global assessment taking into account all relevant factors."
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