The European Limited v The Economist Newspaper Limited

Under section 10(2) of the Trade Marks Act 1994, the question is whether similarity between a sign and a mark, together with the identity or similarity of the goods, creates a likelihood of public confusion. The assessment is global and considers visual, aural and conceptual similarity, the overall impression, and distinctive and dominant components. An ordinary descriptive word in a composite mark should not be isolated as its essential origin-indicating feature, particularly where the proprietor disclaims a monopoly. Greater distinctiveness increases the likelihood of confusion; descriptive matter reduces it. Market evidence may explain relevant conditions, but witnesses cannot decide confusing similarity. A section 11(2)(b) defence need not be determined where infringement is not established.

The European Limited, publisher of The European, appealed from Rattee J's order of 14 March 1996 dismissing its claim against The Economist Newspaper Limited for infringement of a registered trade mark. The respondent used European Voice as the masthead of another weekly newspaper. The registered mark, originally registered under the Trade Marks Act 1938, was treated as registered under the Trade Marks Act 1994. Both publications were newspapers, but the signs were not identical.

Rattee J found no similarity creating a likelihood of confusion after comparing the mastheads and assessing evidence of actual confusion, surveys and trade witnesses. The appeal concerned section 10(2), with a respondent's notice raising section 11(2)(b). The central issue was whether use of the common word European in the two mastheads was sufficiently similar to create a likelihood of confusion.

1. Disposition. The appeal was unanimously dismissed with costs. Leave to appeal to the House of Lords was refused. Lord Justice Millett delivered the leading judgment. Lord Justice Otton agreed with his reasons and expressed no view on section 11(2). Lord Justice Hobhouse agreed on section 10 and likewise left section 11(2) undecided.
2. Section 10(2). The statutory inquiry is a single question: whether, because of similarity between the sign and the registered mark and the identity or similarity of the goods, there is a likelihood of confusion, including association. Similarity is a matter of degree. Except where there is no similarity at all, the issue is whether the similarity is confusing.
3. The court applied the global assessment required by Sabel BV v Puma AG, C-251/95. Visual, aural and conceptual similarity must be assessed from the overall impression, with attention to distinctive and dominant components. The more distinctive the earlier mark, the greater the likelihood of confusion; the converse applies where its prominent feature is descriptive and weakly distinctive.
4. The mastheads were visually and conceptually different. The word European was ordinary and descriptive in the respondent's masthead, while it formed only part of the appellant's device. The appellant's disclaimer of any monopoly in the word was inconsistent with treating it as the essential origin-indicating feature. The court was therefore entitled to find no confusing similarity. Aural comparison could not justify isolating the common word while ignoring the other distinctive features of the composite mark.
5. Market witnesses may explain special features of the relevant market, but they are not experts on confusing similarity. The judge had to reach his own conclusion. Evidence of actual confusion is rarely significant in a trade mark case, although significant evidence might displace an initial conclusion based on comparison. The evidence did not do so here.
6. Section 11(2)(b). Lord Justice Millett expressed the provisional view that the provision may permit fair use of a registered mark to indicate characteristics of another's goods, but not use which also indicates their trade origin or a confusingly similar origin. That issue was obiter and was expressly left for a case requiring decision.

• Court of Appeal (Civil Division): dismissed the appeal from Rattee J's order, with costs, and refused leave to appeal, [1997] EWCA Civ 2771.
• Chancery Division: Rattee J dismissed the infringement action by order dated 14 March 1996. The judgment is referred to as reported at [1996] Fleet Street Reports.