George v Bond

Summary judgment may be granted where a defence has no realistic prospect of success, provided the court avoids conducting a mini-trial. In trade mark infringement claims, the relevant question is the likelihood of confusion, assessed globally by reference to visual, aural and conceptual similarity and the similarity of the services. Actual confusion is unnecessary. National trade mark registrations have national effect, so geographical separation between businesses does not prevent infringement. Similar third-party marks do not, without more, establish that a registered mark has become customary in the trade. A change of name may remain infringing where the new mark remains conceptually similar and the surrounding circumstances encourage consumers to link it with the earlier mark.

The claimant owned two UK trade marks for Oven Angels relating to oven and kitchen cleaning services. The defendant operated an oven-cleaning business, first as The Oven Angels and later as The Oven Archangel, using word and device marks and associated domain names.

The claimant applied for summary judgment for infringement under sections 10(1) and 10(2) of the Trade Marks Act 1994. The defendant admitted infringement of the original name but disputed infringement by the revised name, relying on the absence of actual confusion, geographical separation, other businesses using similar names, and the claimed damages. The central issues were whether the marks created a likelihood of confusion and whether the defence had a realistic prospect of success.

1. Summary judgment. Applying the principles summarised in Easyair v Opal Telecom [2009] EWHC 339 (Ch), the court had to avoid a mini-trial but determine whether the defence had a realistic, rather than fanciful, prospect of success.
2. Original marks. The defendant’s first word mark, The Oven Angels, was visually, aurally and conceptually identical to the claimant’s word mark apart from the word “The”. The defendant’s first device marks also had a high degree of visual, aural and conceptual similarity, including similarity in the angel logos and their colour. Because the services were identical, there was a likelihood of confusion under sections 10(1) and 10(2) of the Trade Marks Act 1994.
3. Applicable infringement test. Applying Comic Enterprises v Twentieth Century Fox Film Corp [2016] EWCA Civ 41, likelihood of confusion was assessed globally. Evidence of actual consumer confusion was unnecessary. The claimant’s geographically limited trading area did not assist the defendant because the registrations had national effect.
4. Revised marks. Although The Oven Archangel was less similar visually and aurally, “archangel” conveyed a higher degree of angel and reinforced the conceptual similarity. The identical services, continued use of historical Facebook material, the same business and trade channels, and the context of use supported a likelihood of confusion.
5. Other matters and disposal. Other businesses using similar names did not establish that the claimant’s mark had become the common name in the trade within section 46(1)(c). The damages dispute was not a defence to liability, and assessment was premature. Summary judgment was granted for infringement by each of the defendant’s first and second word and device marks.