esure Insurance Ltd v Direct Line Insurance Plc

For trade mark opposition based on a likelihood of confusion, the tribunal must make a global assessment from the viewpoint of the average consumer. Similarity of marks, similarity of goods or services and likelihood of confusion are relevant conditions, but the principle of interdependence prevents their treatment as watertight compartments.

Where the goods or services are familiar to the general public, the tribunal may determine consumer perception by examining the marks and applying its own common sense. Witness evidence or a consumer survey is not invariably required. Expert opinion about confusion will ordinarily carry no weight where it merely supplies an opinion which the tribunal can form for itself. Specialist evidence may assist where the relevant market lies outside ordinary judicial experience.

esure Insurance Ltd applied to register a three-dimensional image of a computer mouse on wheels for insurance and financial services. Direct Line Insurance Plc opposed registration by reference to its registered image of a red telephone on wheels.

The Trade Marks Registry upheld the opposition under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994: [2008] RPC 99. Lindsay J dismissed esure's appeal overall: [2008] RPC 143. Although he found no proven likelihood of confusion under section 5(2)(b), he upheld the opposition under section 5(3).

On a renewed application for permission to bring a second appeal, the central questions were whether the hearing officer could find confusion without supporting witness or survey evidence, how similarity and confusion should be assessed, and what weight could be given to a branding expert's opinion about the average consumer.

1. Permission to appeal was granted, but the appeal was dismissed unanimously. The hearing officer had been entitled to conclude that use of the proposed mark, including in red with black wheels, was likely to cause indirect confusion with Direct Line's well-known mark. Lindsay J had therefore been wrong to reverse the decision under section 5(2)(b) of the Trade Marks Act 1994.

2. Per Arden LJ, similarity of marks, similarity of goods or services and likelihood of confusion must all be considered. The assessment is global and proceeds from the viewpoint of the average consumer. The factors are interdependent, so they cannot be placed in separate watertight compartments. Marks must be examined as wholes, while any distinctive or dominant component affecting their overall impression must be taken into account.

3. The Court inclined to the view that European jurisprudence imposes no separate minimum threshold of similarity. If there is no similarity, no question of confusion arises. If there is some similarity, the likelihood of confusion must be considered without interposing an additional threshold. The point was left for final determination in a case where it affected the result.

4. Where services are familiar to the public, a hearing officer or judge may assess the perception of the average consumer from the marks, relevant market evidence and ordinary common sense. The issue is a jury question. Consumer testimony or survey evidence is not invariably required. An appellate court should show real reluctance to disturb such a multifactorial evaluation in the absence of a distinct and material error of principle.

5. The branding expert's evidence about confusion carried no weight. It expressed his own view about a familiar market and did not depend on expertise outside the tribunal's knowledge. Expert evidence may have a role in an unfamiliar specialist market, but opinion evidence concerning confusing similarity is generally unhelpful where the tribunal can form a fully informed view itself. Jacob and Maurice Kay LJJ agreed and emphasised that litigation is determined by the tribunal, not by an expert.

6. Consumer surveys may sometimes provide more cogent evidence, but they are costly and may be defective. The Court encouraged advance case-management directions concerning the scope and methodology of any proposed survey.

1. Court of Appeal (Civil Division): Permission for a second appeal was granted, but the appeal was dismissed unanimously. The High Court's conclusion under section 5(2)(b) was set aside and the hearing officer's decision upholding the opposition was restored: [2008] EWCA Civ 842.

2. High Court, Chancery Division: Lindsay J dismissed the appeal overall. He held that confusion had not been proved under section 5(2)(b) of the Trade Marks Act 1994, but upheld the opposition under section 5(3): [2008] RPC 143.

3. Trade Marks Registry: The hearing officer upheld Direct Line's opposition under sections 5(2)(b) and 5(3), finding indirect confusion, unfair advantage and detriment: [2008] RPC 99.