Bambino Mio Ltd v Cazitex

Under section 10(2)(b) of the Trademarks Act 1994, the similarity-of-goods factor applies only where goods are similar but not identical. Identity has no degrees, so that factor is irrelevant where the defendant’s goods fall within the registered specification. Likelihood of confusion remains a global assessment, taking account of the marks’ visual, aural and conceptual similarity and the characteristics of the average consumer. An appellate court should not interfere with a first-instance assessment where the correct test was applied and later errors, such as an irrelevant cross-check, did not affect the conclusion.

The claimant owned a registered word mark for goods including reusable nappies. The defendant sold reusable nappies in the United Kingdom under the sign Bambineo for a few months in 2007, then changed the name after objection. The claimant brought infringement proceedings under section 10(2)(b) of the Trademarks Act 1994.

HHJ Pelling QC dismissed the claim, finding no realistic likelihood of confusion. He nevertheless considered the degree of dissimilarity between the parties’ products as a cross-check and referred in his final conclusion to similar rather than identical goods. The issue on appeal was whether those matters disclosed a fundamental error of law which justified appellate intervention.

Appeal dismissed unanimously. Sir John Chadwick gave the leading judgment, with Patten LJ and Jacob LJ agreeing.

1. The substantive issue was whether the judge had proceeded on a fundamental misapprehension that the goods were merely similar rather than identical. The appellant did not pursue perversity and therefore had to establish an error of law that infected the conclusion.
2. Factor 8 in the summary of the likelihood-of-confusion factors in Julius Sämann Ltd & Ors v Tetrosyl Ltd [2006] EWHC 529 (Ch) concerns the relationship between the degree of similarity of the marks and the degree of similarity of the goods. It does not apply where the goods are identical. There can be no degrees of identity. Where goods are similar but not identical, the factor forms part of the global appreciation and must be considered before reaching the overall conclusion.
3. The judge’s analysis before paragraph 34 properly applied the global test. He assessed the marks’ visual, aural and conceptual similarity through the eyes of the relevant average consumer. His conclusion that there was no realistic likelihood of confusion was reached without relying on any comparison between the claimant’s actual goods and the defendant’s goods.
4. The judge was wrong to use factor 8 as a cross-check and was imprecise in referring to similar goods in paragraph 43. Those errors did not infect his earlier reasoning because he had already reached his conclusion and did not rely on the later analysis.
5. Jacob LJ added that the statutory right arises from registration rather than actual use. The mark is notionally treated as fairly used for the registered goods, while the defendant’s actual use and the sophistication and research likely to be involved in purchasing the goods remain relevant to the average-consumer assessment.
6. The evidence of actual confusion was hearsay and vague and provided no assistance. The claim remained dismissed, and the appeal was dismissed.

1. Court of Appeal (Civil Division): On 29 July 2009 dismissed the appeal.
2. High Court of Justice, Chancery Division: HHJ Pelling QC, by order dated 13 November 2008, dismissed the infringement claim.