32Red Plc (A Gibraltar Company) v WHG (International) Ltd & Ors

Trade mark infringement requires a global assessment of the overall impression created by the competing marks, viewed through the eyes of the average consumer and allowing for imperfect recollection. Identical services may compensate for a lesser degree of mark similarity. A likelihood of confusion includes mistaken association arising from a belief that businesses are economically linked; actual confusion is not essential.

For extended protection, injury to distinctive character requires evidence of a change, or serious likelihood of change, in the average consumer’s economic behaviour. A mark is not descriptive merely because it alludes to a feature of one game. A short number may be inherently distinctive and registrable where it functions as a badge of origin. A mark may be validly registered for tactical reasons connected with enforcement, provided the application is made in good faith and there is a genuine intention to use it.

32Red operated an online casino under the 32Red brand and owned two Community trade marks, comprising the word mark “32RED” and a figurative logo. It later obtained registration of the UK mark “32”. William Hill Online operated an online casino using six signs incorporating “32”, including “32Vegas”, “32vegas.com” and “32v”.

32Red claimed infringement under Articles 9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation and sections 10(2) and 10(3) of the Trade Marks Act 1994. William Hill challenged the validity of all three marks. The central issues were likelihood of confusion, extended protection, validity, bad faith, revocation and the separate reputation of the UK mark.

1. Community marks—likelihood of confusion. The six Vegas signs were used for identical or virtually identical online casino services. The number 32 was inherently distinctive in this context, while “red” and “vegas” conveyed general gaming associations. The dominant feature of each Vegas sign was the figure 32. Considering the marks globally, and allowing for imperfect recollection, the similarity created a likelihood that online gamblers would believe the casinos were under common ownership or economic control. The claim under Article 9(1)(b) succeeded.
2. Actual confusion was unnecessary. Such evidence, where available, was confirmatory rather than an essential ingredient of the required value judgment. The principal risk was mistaken association, including customers choosing 32Vegas because of an assumed connection with 32Red or becoming dissatisfied with 32Red after an experience with 32Vegas.
3. Article 9(1)(c). The Community marks had a strong reputation and the signs created a link in the relevant public’s mind. The similarity of the signs, identical services, strength and distinctiveness of the marks, likelihood of confusion and evidence of complaints supported a finding of detriment to distinctive character and repute. Detriment to distinctive character required a change, or serious likelihood of change, in economic behaviour. The court inferred such a change from the similarity of the names and the carousel marketing model. The claim under Article 9(1)(c) also succeeded. It was unnecessary to decide whether tarnishment was established.
4. Validity of the Community marks. “32Red” was not descriptive of the characteristics of online casino services, did not lack distinctive character and was not customary trade language. Any roulette allusion created a gaming association rather than a description of the services. The marks were therefore valid; in any event, their extensive use had acquired distinctiveness by 2009.
5. Validity of the UK mark. There was no principle preventing a two-digit number from functioning as a badge of origin. “32” was not descriptive, commonly used, rendered non-distinctive by the 32Vegas use or made generic by the advertising campaign. The application was not made in bad faith: tactical reasons connected with strengthening the claimant’s position in litigation did not, without more, establish bad faith, and there was a genuine intention to use the mark. The revocation challenges failed.
6. UK mark—infringement. The claimant had not made significant independent use of “32” and had no separate reputation in it by June or July 2009. Consequently, neither likelihood of confusion under section 10(2) nor infringement under section 10(3) was established.
7. The Community mark infringement claims succeeded in respect of all six Vegas signs. The validity challenges to all marks failed. The UK mark infringement claim failed.