WHG (International) Ltd & Ors v 32 Red Plc

Under Article 7(1)(c), a sign is excluded from registration only where it can designate a readily recognisable characteristic of the relevant goods or services. A bare number associated with a roulette result merely alludes to the game and does not describe what online casino services supply. A numeral may possess inherent distinctive character without prior use.

Likelihood of confusion is assessed globally through the average consumer’s imperfect recollection. A component may dominate a composite mark, but mere association is insufficient. Confusion exists where the association suggests common or economically linked origin. Separate reputation established by use is not a prerequisite to infringement under section 10(2) of the Trade Marks Act 1994.

32Red sued William Hill Online for infringement of three registered trade marks: the UK number mark 32, the Community word mark 32Red and the Community 32Red device mark. The alleged infringing signs were 32Vegas and associated text and device signs used for online casino services.

Mr Justice Henderson held that the Vegas signs infringed the Community marks, rejected the counterclaim challenging validity, held that the 32 number mark was valid, but dismissed the claim that the 32 number mark had been infringed. William Hill Online appealed against validity and infringement findings. 32Red cross-appealed on infringement of the 32 number mark. The central issues concerned registrability, bad faith, likelihood of confusion and the need for separate reputation.

The Court of Appeal unanimously dismissed William Hill Online’s appeal and allowed 32Red’s cross-appeal.

1. Validity. The court upheld the finding that the bare number 32 was not descriptive under Article 7(1)(c) of the Community Trade Mark Regulation. The number alluded to a possible roulette result but did not describe a characteristic of the online casino services. Ajencja Wydawnicza Technopol sp. z.o.o. v OHIM [2011] ETMIR 21 did not assist the appellants because 1000 could describe features of publications, whereas 32 did not describe what the services supplied.
2. Distinctiveness under Article 7(1)(b) was a separate question. A numeral could have inherent distinctive character without prior use. The use of 32Vegas, or commercially insignificant third-party uses, did not make 32 common currency in online gambling. The Community marks were therefore valid, and the alternative finding of acquired distinctiveness was not perverse.
3. The bad-faith challenge also failed. An application made for tactical reasons, including to strengthen litigation prospects or obtain a monopoly, was not necessarily made in bad faith. The trial judge was entitled to find a genuine intention to use the mark, and there was no perversity in that conclusion.
4. On likelihood of confusion, the trial judge had applied the correct global assessment through the average consumer’s imperfect recollection. It was permissible to identify 32 as the dominant feature while assessing the marks as wholes. The identical services, the prominence of 32, the gaming associations and the distinctive character of the earlier marks supported a likelihood that consumers would believe the businesses were economically linked. The absence of substantial actual confusion did not undermine that evaluative conclusion.
5. The court also accepted that the Vegas sign took unfair advantage of the Community marks. The false association in the same market made consumers more willing to switch allegiance to, or use, 32Vegas.
6. The cross-appeal succeeded because the trial judge had wrongly assumed that infringement of the 32 number mark under section 10(2) of the Trade Marks Act 1994 required a separate reputation established by use. Having found inherent confusion and identified 32 as the dominant feature of the Community marks and the Vegas signs, there was no proper basis for rejecting infringement of the number mark.

1. Court of Appeal (Civil Division) — [2012] EWCA Civ 19: William Hill Online’s appeal dismissed; 32Red’s cross-appeal allowed.
2. High Court of Justice, Chancery Division — Mr Justice Henderson’s order dated 7 March 2011: Community marks infringed and valid; 32 number mark valid but not infringed.