Compass Publishing BV v Compass Logistics Ltd

For trade mark identity, an added word with trade mark significance means that a sign is not identical to the registered mark, even if the added word is descriptive. Identity is reserved for signs which reproduce the mark, subject only to differences so insignificant that ordinary consumers may overlook them.

Likelihood of confusion is assessed globally, by reference to notional as well as actual use of the registered mark. The absence of actual market confusion is therefore only a rule of thumb. A Community trade mark may be invalidated under Article 8(4) of Council Regulation 40/94 by an earlier passing-off right if that right has more than mere local significance from a Community perspective.

The claimant owned registered COMPASS trade marks, including a Community trade mark and two United Kingdom marks, used by companies in its group for consultancy services. The defendant had traded as Compass Logistics and sometimes used COMPASS alone for logistics and supply-chain consultancy.

The claimant alleged infringement. The defendant denied infringement and brought a Part 20 claim seeking revocation or invalidity of the marks, relying principally on its earlier goodwill and passing-off rights. The court considered whether COMPASS LOGISTICS was identical or confusingly similar to COMPASS, whether the marks were valid, and whether the defendant’s earlier rights had more than mere local significance.

1. Infringement of the Community trade mark. The defendant’s deliberate use of COMPASS alone infringed, subject to validity. COMPASS LOGISTICS was not identical to COMPASS under Article 9.1(a) of Council Regulation 40/94. The added word was noticeable and had trade mark significance because the defendant used the expression as its name and identifier. The approach in Decon Laboratories v Fred Baker Scientific [2001] RPC 293 required reassessment in light of LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ETMR 83 and Reed Executive plc v Reed Business Information Ltd [2004] EWCA (Civ) 159.

2. Nevertheless, COMPASS LOGISTICS infringed under Article 9.1(b). Likelihood of confusion had to be assessed by notional use of COMPASS across the full scope of its registration, including logistics consultancy. The absence of actual confusion was not determinative because the parties operated in different parts of a very large market. The dominant element was COMPASS, while LOGISTICS alluded to the field of services. A significant section of the public could regard the defendant as the logistics branch of the claimant’s business.

3. Validity of the Community trade mark. For Article 8(4), a trader with goodwill protectable by passing off was treated as the proprietor of relevant earlier rights, notwithstanding the common-law distinction between ownership of a mark and protection of trading reputation. The right to prohibit use of a subsequent trade mark included the right to restrain notional fair use without disclaimers where that use would amount to passing off.

4. Whether an earlier right had more than mere local significance was assessed from the perspective of the Community market for the relevant goods or services. A right was of mere local significance where its geographical spread was substantially less than the whole European Union and its market significance was small. The defendant had sufficient reputation for a passing-off action in a small part of the English logistics consultancy market, but its presence elsewhere in the Community was microscopic. The Article 8(4) challenge therefore failed.

5. United Kingdom marks. The same infringement analysis applied under section 10 of the Trade Marks Act 1994. The defendant offered services falling within the specification of the 1988 UK Mark, so infringement under section 10(1) was established. In any event, the services were closely allied and section 10(2) infringement was also made out. The non-use attack failed because the claimant had used the mark for Class 42 services, including services supplied to public bodies which were not commercial or industrial undertakings.

6. The 1996 UK Mark was invalid under section 5(4)(a) of the Trade Marks Act 1994 to the extent that it covered logistics consultancy services in the United Kingdom.

7. The claimant succeeded on its claim. The defendant’s Part 20 claim failed save for the limited invalidity of the 1996 UK Mark. The timing and scope of equitable relief were left for further argument.

First-instance decision. No prior appellate decision is stated in the judgment.