Bambino Mio Ltd v Cazitex N.V.

Trade mark infringement under section 10(2)(b) requires a global assessment of the likelihood of confusion, viewed through the eyes of the reasonably well-informed, observant and circumspect average consumer. Visual, aural and conceptual similarity must be assessed by reference to the overall impression, and aural similarity alone is insufficient. The similarity of the goods and the distinctiveness of the earlier mark remain relevant. Where the purchaser is likely to research a substantial purchase, that purchasing context may reduce the likelihood of confusion. A word mark registered in plain terms is assessed by the words themselves; unregistered fonts and get-up have limited relevance. The use of a made-up single word was not confusingly similar to a two-word mark with a recognisable meaning.

The claimant owned the registered word mark Bambino Mio for, among other goods, reusable nappies. The defendant marketed reusable bamboo nappies under the invented sign Bambineo, sometimes accompanied by the strap line Natural bamboo softness. The defendant changed the sign to Bambinex by May 2007, and accepted responsibility for relevant distributor activity if liability were established. The claimant alleged infringement under section 10(2)(b) of the Trade Marks Act 1994. The central issue was whether use of Bambineo, with or without the strap line, created a likelihood that the average purchaser would believe that the parties’ goods came from the same or economically linked undertakings.

1. Applicable test. The court applied the established global assessment of confusion, considering the average consumer, the visual, aural and conceptual similarity of the mark and sign, the overall impression, the distinctiveness of the earlier mark, imperfect recollection and the similarity of the goods. Mere association is insufficient; the relevant question is whether consumers would believe that the goods came from the same or economically linked undertakings.
2. Average consumer and purchasing context. Purchasers of reusable nappies were reasonably well informed, observant and circumspect. The products involved research, specialist information and a substantial one-off expenditure. That context made confusion less likely unless the similarities were substantial.
3. Comparison of the mark and sign. Bambino Mio was a two-word mark, consisting of words with recognisable Italian meanings. Bambineo was a single invented word with no known meaning and no agreed pronunciation. The mark and sign were visually, aurally and conceptually dissimilar. Any possible aural similarity was outweighed by the absence of visual and conceptual similarity. The strap line made the presentation still more distinct.
4. The word Bambino was not descriptive of reusable nappies. Proctor & Gamble v The Office for Harmonisation of the Internal Market [2002] RPC 17 was distinguishable because it concerned the unusual combination Baby Dry and the distinctiveness of that combination.
5. The isolated internet, eBay and chat-room material did not establish confusion by the average consumer. The expert report was admissible and of some value; reliance on Esure [2008] EWCA civ 842 was misplaced because the expert did not give evidence on the ultimate issue.
6. The use of Bambineo had ended by May 2007 in any event. The claim for infringement was dismissed.