| TRADE MARK— Registration — Practice — Appeal — Finding by hearing officer of indirect confusion between applicant’s proposed mark and opponent’s registered mark — Judge on appeal upholding decision but finding material error of principle on confusing similarity — Role of consumer survey and expert evidence in trade mark cases — Whether complexity of order being appealed “compelling” reason for purposes of permission to appeal — Trade Marks Act 1994, s 5 — CPR rr 52.3(6), 52.13
esure Insurance Ltd v Direct Line Insurance plc [2008] EWCA Civ 842; [2008] WLR (D) 252
CA: Arden, Jacob and Maurice Kay LJJ: 23 July 2008
Since a trade mark case which raised the critical issue of confusion would be assessed from the viewpoint of the average consumer, the cogency of the evidence of an expert as to his own opinion, where the tribunal was in a position to form its own view, was in real doubt. The facts spoke for themselves. Consumer surveys were costly to produce and their results, when based upon the wrong questions, of no evidential value. To be commended was the practice of giving case management directions at an interim stage which required the parties to seek directions of the court (which could be given in advance of the trial) as to any proposed survey that the parties might wish to put in evidence at trial.
The Court of Appeal so observed, giving permission to appeal to but dismissing the appeal of esure Insurance Ltd from the decision of Lindsay J on 5 July 2007 [2007] EWHC 1557 (Ch); [2008] RPC 143 upholding the decision of the hearing officer in the Trade Marks Registry (Mr Allan James) [2008] RPC 99 that there was indirect confusion for the purposes of s 5(3) of the Trade Marks Act 1994 between the mark sought to be registered by esure Insurance Ltd, a red computer mouse on wheels, and that already registered by the opponent, Direct Line Insurance plc, a red telephone on wheels.
ARDEN LJ said that esure contended that the judge was right on confusing similarity and that, had he not given inappropriate weight to the evidence of the branding expert on the unfair advantage issue, he would have reached the same conclusion on that point too, with the result that the opposition would have failed. The Court of Appeal was concerned with issues as to the role of expert evidence under s 5, and, in addition, the consequences of non-confusing similarity between non-identical marks under s 5(3). esure’s case was that, in those circumstances, the conditions in s 5(3) could not be fulfilled, particularly where there was no survey evidence in support. It was difficult to see what was gained from the evidence of an expert as to his own opinion where the tribunal was in a position to form its own view. The evidence of the branding expert was of no weight in this case: he had merely given evidence as to his own opinion about a market which would be familiar to judges. If more cogent evidence of consumer perception were needed, the traditional method of consumer surveys must (subject to the second point) carry more weight and was to be preferred. Secondly, consumer surveys were costly to produce. They could sometimes be based on the wrong questions. There was much to be said for the practice initiated by Pumfrey J in O2 Ltd v Hutchison 3G Ltd [2005] ETMR 61. Under that practice case management directions would be given at an interim stage requiring the parties to seek the directions of the court as to the scope or methodology of any proposed consumer survey that the parties might desire to put in evidence at the trial. Those directions could then be given in advance of trial.
In giving permission to appeal, the complexity of the judge’s order constituted a “compelling reason” for the grant of permission, including permission for a second appeal, for the purposes of CPR rr 52.3(6) and 52.13. Usually, the conditions necessary under r 52.13 for a second appeal were interpreted as being separate and distinct from those for a first appeal under r 52.3(6). However there was no reason why the same factor could not qualify as a compelling reason under both those provisions. However, the appeal would be dismissed.
JACOB and MAURICE KAY LJJ delivered concurring judgments.
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