Ellerman Investments Ltd & Anor v Elizabeth C-Vanci & Anor

For the purposes of trade mark infringement, a sign formed by combining a registered word mark with another word is not identical to the mark where the additional word is sufficiently meaningful to be noticed by the average consumer. The assessment under Article 5(1)(b) requires a global evaluation of the marks, services and all relevant circumstances. The overall impressions and distinctive elements of the marks, the distinctiveness of the earlier mark, the similarity of the services and the interdependence of those factors are material. Specific evidence of actual confusion is unnecessary. Summary judgment is appropriate where there is no real prospect of the claimant failing at trial.

The claimants, owners and licensees of RITZ trade marks for gaming services, sought summary judgment under Part 24 of the Civil Procedure Rules. The defendants operated websites using domain names including ritzpoker and ritzypoker, with links to online gaming sites.

The claimants alleged infringement under Article 5(1)(a) and, alternatively, Article 5(1)(b) of the European Trade Marks Directive. The central questions were whether the defendants’ signs were identical with the registered mark and, if not, whether their similarity to the mark and the similarity of the services created a likelihood of confusion.

1. Article 5(1)(a). The word poker in Ritzpoker was not wholly or specifically descriptive in a manner that added nothing to Ritz. It was not so insignificant that it would go unnoticed by the average consumer. The signs were therefore Ritzpoker, rather than the identical sign Ritz, and the claim under Article 5(1)(a) failed.
2. Article 5(1)(b). The likelihood of confusion had to be assessed globally through the eyes of the reasonably well-informed, reasonably observant and circumspect average consumer. The assessment required consideration of the overall impressions created by the marks, their distinctive and dominant components, the distinctiveness of the earlier mark, the similarity of the services and the interdependence of those factors.
3. The evidence established a close relationship between the defendants’ websites and gaming services, including the provision of access to gaming sites. The claimants’ Ritz mark had a highly distinctive character through use and enjoyed substantial reputation and goodwill in gaming-related services. There was substantial similarity between Ritz and ritzpoker, and somewhat less similarity between Ritz and ritzypoker. The services were substantially similar. The public was likely to believe wrongly that the services came from the same or economically linked undertakings.
4. Evidence of particular instances of confusion was unnecessary. The evidence showed no real prospect of the claimants failing at trial on the Article 5(1)(b) claim. Summary judgment was accordingly entered against the defendants. The form of order was left for further submissions.