Lloyd's & Anor v Lloyds Publishing Group Ltd (Rev 1)

On summary judgment, the court may assess whether pleaded factual assertions have real substance. A case should not proceed where the alleged facts are fanciful or, even if proved, cannot establish liability. The test remains whether the claim or defence has a real prospect of success and whether there is any other compelling reason for trial.

Trade mark infringement under section 10(3) of the Trade Marks Act 1994 may arise where a reputed mark is used without due cause to obtain unfair advantage or cause detriment. Passing off requires goodwill, misrepresentation and damage. Acquiescence requires conduct inducing a belief that infringement is assented to; mere delay is insufficient. Similar third-party names do not by themselves destroy distinctiveness.

Lloyd’s and Informa UK Limited sought summary judgment against Lloyds Publishing Group Limited for trade mark infringement and passing off. The defendant counterclaimed for invalidity of the claimants’ marks on grounds of lack of distinctive character. The dispute concerned the defendant’s use of Lloyds and Lloyds Publishing in maritime publishing, directory and advertising activities, including communications that caused customers to believe that it was connected with the claimants.

The court considered whether the claims and counterclaim satisfied the summary judgment test, whether section 10(2)(b) infringement was established despite uncertainty about similarity of goods or services, and whether infringement under section 10(3), passing off, acquiescence and alleged loss of distinctiveness could be determined without a trial.

1. The application was suitable for summary determination in relation to the defendant’s misleading marketing communications. Under CPR 24.2, the court could reject factual assertions lacking real substance and could determine issues where, even assuming the alleged facts were proved, the claim or defence could not succeed. The court was not required to accept unsupported assertions without analysis.

2. Section 10(2)(b) infringement was not suitable for summary judgment. The marks were qualified by reference to insurance and there was a real issue about whether the defendant’s goods or services were similar to those covered by the registrations.

3. Section 10(3) infringement was established in relation to the defendant’s marketing activities. The marks had a reputation. The defendant’s use created a strong link with the claimants and involved unfair advantage and free-riding on their reputation. The defendant had shown no due cause for adopting the name.

4. Passing off was established. The claimants had goodwill, the defendant’s communications were calculated to create a misrepresentation of connection, and damage was established or sufficiently inevitable for the purposes of the application.

5. There was no adequate defence of acquiescence. The claimants had not known the true nature of the defendant’s activities for the relevant period, and the delay did not induce the defendant to believe that the infringement was assented to.

6. The existence of other businesses using Lloyd, Lloyds or Lloyd’s did not establish loss of distinctiveness. Concurrent use, particularly where the businesses, marks or markets differed and there was no evidence of confusion, was not fatal to the claims.

7. Relief had to be proportionate. Injunctions could prevent the specific misleading statements, marketing methods, publication titles and domain name use established by the evidence. The court was not satisfied on summary judgment that the defendant’s full company name had to be prohibited, leaving that issue for trial. The parties subsequently settled the action after the court recorded these conclusions.

First-instance decision. Following the judgment, the parties settled the action. A supplemental judgment dated 3 February 2009 recorded the court’s conclusions on the relief which had been determined in principle.