Miss Recorder Amanda Michaels:
- This is a claim for trade mark infringement and passing off and this judgment relates to the trial of liability only. For the reasons given in detail below, I dismiss the allegations of trade mark infringement and passing off and I also dismiss the counterclaim for invalidity.
- The Claimant is the Société Anonyme des Bains de Mer et du Cercle des Étrangers à Monaco ('SBM'), a company registered in Monaco, which carries on business in Monaco. SBM is the owner of the Casino de Monte-Carlo, which was founded in 1863 in Monaco. The area of land on which the casino is located was renamed 'Monte Carlo' in 1866. From 1863 onwards the Claimant has had a state monopoly in relation to the provision of casino gaming services in the Principality of Monaco. It provides such services not only at the Casino de Monte Carlo but at four other casinos in the Principality: the Casino Café de Paris, Casino La Rascasse, Monte-Carlo Bay Casino and Sun Casino. According to the Particulars of Claim, its turnover in relation to its casino services ranged from over €250 million in the financial year 2007/8, to €172 million for the latest financial year pleaded, 2010/11.
- SBM's, business, however, has for many years extended far beyond casinos, to include the ownership of hotels, such as the Hôtel de Paris Monte-Carlo, Hôtel Hermitage Monte-Carlo and the Monte-Carlo Beach Hotel, and the provision of other leisure services, such as the spa Les Thermes Marins de Monte-Carlo and the Monte-Carlo Beach Spa, sports clubs such as the Monte-Carlo Golf Club, restaurants, bars and nightclubs. The evidence before me did not state when each such attraction opened, but two advertisements for 'Monte Carlo' in 1905-6 made reference to hotels, theatrical performances, the 'International Sporting Club' and opera performances, suggesting that many of the current activities have been offered for a significant period.
- SBM is the registered proprietor of a large number of trade marks, including Community Trade Marks consisting of or including the words 'Monte-Carlo' as well as a large number of domain names also including the words 'Monte-Carlo' or permutations on those words. However, in these proceedings it relies upon only two of its registered marks (together 'the Registered Marks') namely:
i) Community Trade Mark No. 8395857 ('the Monte-Carlo Mark'), filed on 30 June 2009, for the words 'MONTE-CARLO' and covering the following goods:
Class 9
Computer programs and software; Casino game software.
Class 28
Playing cards, counters (discs) for games, dice, gaming tables, mats for games, slot machines.
ii) International Trade Mark (designating the EU) No 1025318 ('the Casino de Monte-Carlo Mark'), protected in the EU since 26 November 2010 for the words "CASINO DE MONTE-CARLO" and covering the following goods and services:
Class 9
Software and computer programs; casino gaming software.
Class 28
Playing cards, counters (discs) for games, dice for games, game tables, mats for games, slot machines.
Class 35
Online reservation services via an Internet commercial services portal with regard to casino gaming.
Class 41
Entertainment, providing casino facilities (gambling), providing amusement arcade services, gambling, information on entertainment and casino facilities (gambling), organization of competitions and championships for games, remote casino gaming services, providing casino gaming online on a computer network, casino gaming services accessible via a telephone network.
- SBM claims to have a reputation in the UK as a result of its widespread advertising, promotion and use of the 'mark' Monte-Carlo and the Registered Marks, such that casino services marketed under and by reference to the marks Casino De Monte-Carlo and/or Monte-Carlo are expected to be the services of SBM.
- In these proceedings, SBM complains of the Defendant's provision of "fun casino entertainment" under the trading name 'Monte Carlo Casino Entertainment.' The nature of the services provided by the Defendant is, broadly, to provide tables and croupiers for playing 'fun' casino games such as blackjack or roulette for the entertainment of guests at weddings, corporate events, charity fundraising events or the like. No 'real' gambling takes place, although guests may play or compete for prizes and the Defendant does not have premises at which it provides those services, but provides them wherever the event is located. SBM alleged in the Particulars of Claim that the use by the Defendant of its trading name infringes the Registered Marks and amounts to passing off. It also complained of use by the Defendant of its domain name www.montecarlocasino.co.uk and in its email addresses which include either montecarlocasino or monte _carlo_casino. In the Reply, reliance was also placed on the Defendant's Facebook page (which displays as 'Fun-Casino Monte Carlo'), its Twitter address 'montecarlo 1066' and 'montecarlocasinofuncasinohire' for its Linked in address.
- The Defendant and its predecessors in business, a Mr and Mrs Hobbs, have been carrying on business under the trading name from about 1995. Mr and Mrs Hobbs had used both the trading name and the domain name now complained of, www.montecarlocasino.co.uk, which was registered in October 1999, as well as another domain name since abandoned, 'www.monte-carlo-casino.co.uk' The business was purchased by the Defendant as a going concern in October 2002. In this judgment, I refer to the trading name and the domain name (and the matching email addresses) as 'the Defendant's signs' without further distinction, unless it is necessary to do so. I deal with the additional signs complained of below.
- SBM became aware of the Defendant's existence in 2006 when a 'watch notice' listed the Defendant's domain name amongst, it seems (there was no direct evidence on this point), many similar names. The unidentified person who compiled the report, which was put in evidence in a greatly redacted form, described the Defendant's domain name as for an 'organisateur de jeux de casino'. Despite that description, it seems no investigation was then made of the Defendant's business and nothing was done at that date to contact the Defendant. It was not until 17 February 2011 that a letter of claim was sent to the Defendant by SBM's solicitors, by which time both of the Registered Marks had been registered. No explanation was given to me for action being taken at that date. However, the letter stated that the Defendant's activities had recently come to SBM's attention, and referred to its claimed goodwill in the UK in the names 'Casino de Monte-Carlo' and 'Monte-Carlo' (referring to the names both with and without the hyphens) in relation to casinos. It referred to SBM's 2,000 plus domain names, and listed 'a selection' of SBM's registered marks which affect the UK, namely 23 registered CTMs and international marks including the name Monte-Carlo, 10 of which consisted only of that name. That list included both of the Registered Marks. The letter alleged infringement of all 23 marks pursuant to s 10(1) and (3) of the 1994 Act or Arts 9(1)(a) and (c) of Council Regulation 207/2009 ("the CTMR"), as well as passing off. The letter did not give the effective dates of the Marks, but most of them date from between 2007 and 2010.
- The Defendant responded promptly, denying any infringement or passing off and referring to the continuous operation of the Defendant's business in the UK since 1995 and the registration of the Defendant's domain name in 1999. It claimed the right to continue using its name, suggested that SBM had acquiesced in such use and proposed entering into a co-existence agreement. Further correspondence followed, including a letter from SBM's solicitors dated 11 March 2011 in which they asserted that SBM had customers within the UK, and extensive goodwill in the UK, which predated the Defendant's business by over 130 years. That letter also referred to two additional, somewhat earlier, registered marks, in particular an international mark 'Casino De Monte-Carlo' registered in 2002, which (although this was not specified in the letter) covers services in Class 41.
- The Claim Form in these proceedings was issued on 9 March 2012. Despite the references which had been made to SBM's other marks, it alleged infringement only of the two Registered Marks, pursuant to Arts. 9(1)(a), (b) and (c) of the CTMR. A defence was served in April 2012 and an amended Defence and Counterclaim was served on 25 October 2012. The Defendant has been unrepresented throughout these proceedings, and whilst Mr Hammond has clearly tried his best to identify any potential defences open to the Defendant, and has cited a number of authorities, he accepted very frankly at the trial that he had been struggling with the law. A number of case management directions were subsequently given, in the course of which a number of the pleaded defences were struck out.
- At a Case Management Conference last December, it was ordered that the Statements of Case should stand as evidence in chief and permission was given for service of witness statements dealing with the following issues:
i) the Claimant's goodwill and reputation in the trade marks Monte-Carlo and Casino De Monte-Carlo;
ii) factual issues relevant to the defence of common-law acquiescence/estoppel and earlier rights;
iii) the distinctiveness and use of the trade marks relied upon by the Claimant;
iv) any incidences of actual confusion on the part of the public, which includes incidences of association with the trade marks relied upon by the Claimant; and
v) any unfair advantage taken of and/or detriment caused to the distinctive character or repute of the trade marks relied upon by the Claimant by reason of the Defendant's actions.
- The only witness statements served were served on behalf of SBM. Those dealt with all of the issues listed above, save for (iv); there was no evidence of any actual confusion.
- At trial, the allegation of infringement pursuant to Art 9(1)(a) was dropped and the allegation of infringement under Art 9(1)(b) was limited to relying upon the Class 41 services in the specification of the Casino De Monte-Carlo Mark. Infringement under Art 9(1)(c) was pursued in relation to both of the Registered Marks. The allegation of passing off was also pursued. The Defendant sought to run a number of defences, such as estoppel, based upon its use of its name since 1995 and its 'earlier rights'. It also counterclaimed for a declaration of invalidity of the Registered Marks on absolute grounds which were in essence that the marks consisted of geographical terms precluded from registration by Art 1(c).
- I heard live evidence from three witnesses. SBM called Mr Emmanuel van Peteghem, its General Counsel, who has held that post since about May 2012. He was in my view a reliable and honest witness, but his evidence as to matters prior to 2012 was necessarily based upon SBM's records and in many respects he could do no more than comment on the documents which were in evidence. Further, though I do not consider that Mr van Peteghem intended to mislead at all, in some respects (mentioned below) his comments were not in my view justified by the documents produced. The statement of truth on the Particulars of Claim had been signed by SBM's managing director, Monsieur Masurel, who was not called. Miss Lorna Buky-Webster is a trainee solicitor at SBM's solicitors who had, when sitting in their IP department, carried out some research for SBM, which I discuss below. I was satisfied that her evidence as to the contents of various films which she had viewed was reliable. The Defendant's only witness was Mr Hammond, who again I found was an honest witness.
Infringement of the Registered Marks
- Article 9 of the Regulation provides
"1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) …
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the Community trade mark."
Infringement under Article 9 (1)(b)
- SBM alleges that the Defendant has used a similar sign to the Casino de Monte-Carlo Mark in relation to identical services to those for which it is registered in Class 41, such that there was (and is) a likelihood of confusion on the part of the public. The preliminary conditions for infringement under Art 9(1)(b) which are indisputably met here are that (i) there is use of a sign by the Defendant, (ii) such use is in the course of trade and (iii) such use is without SBM's consent. The real issue relates to the likelihood of confusion, the assessment of which involves a global assessment taking into account all factors relevant to the circumstances of the case. The UKIPO's standard summary of the guidance of the CJEU, which was approved by the Court of Appeal in Specsavers v Asda [2012] FSR 19 at [52] is:
a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
- There is, however, an important difference between the comparison of marks in the course of opposition proceedings and the comparison of mark and sign in an infringement action, for the latter requires consideration of the use that has actually been made of the sign in context (Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2008] ECR I-4231). In Specsavers v Asda (supra) Kitchin LJ said at [87]:
"… In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
The average consumer
- When the Defendant purchased the business in October 2002 the sales particulars described the services as "Fun-only gambling entertainment for private parties, corporate entertainment, social and charity functions" and the equipment transferred on sale included roulette wheels and tables, blackjack tables, etc. The nature of the business does not appear to have changed substantially since the Defendant took it over. Extracts from its website at www.montecarlocasino.co.uk were in evidence before me and the "about us" page of the website states:
"Monte Carlo Casino Entertainment can bring all the fun and excitement of a real casino to your event or party. Whether your plans are for corporate entertainment, a private party or charity fund-raising our fun casino can entertain and amuse your guests in style.
Founded in 1994 Monte Carlo Casino Entertainment was one of the first fun casino is running in the UK, and has grown to become one of the largest fun casino companies in England thanks to our professionalism, quality of service and very competitive pricing …
Monte Carlo Casino Entertainment operates throughout the UK and has full public liability insurance."
- The "games" page of the website explains further:
"you select from our wide range of full-size gaming tables and we provide the rest. We offer the following games: American Roulette, Blackjack, Texas Hold 'em Poker, Stud Poker, Craps, Wheel of Fortune, and Dice … Our croupiers and gaming directors are all professionally trained and have experience in some of the world's best casinos. But remember - we are there to entertain and make sure that you and your guests have an unforgettable time."
- The website also contains a page "Fun Casinos and the Law" which explains that games are played for amusement only, although prizes may be awarded to players and that 'gaming' should not be the sole or main inducement for people to attend the event. The word Casino must be preceded by the words Fun, Prize or Charity. The price charged for a fun casino event depends upon the number of tables hired: the website extracts downloaded on 12 April 2013 gave the lowest price as £260 for 1 table, £470 for 2 tables and so on.
- The Defendant has advertised its business. The evidence showed that it is listed under Entertainments in various hard-copy Yellow Pages, and where it has a box advertisement this is headed "Monte Carlo Casino Ents" and the text refers to "Fun Casino Nights for Every Occasion." Copies of advertisements placed on-line with Yell.com were classified under Corporate Entertainment and offered various games, professional croupiers, and full-size equipment for weddings, private parties, corporate events and charity fundraising. The Defendant produced invoices showing that it had placed advertisements with a variety of publications and magazines, such as Cosmopolitan Bride and Bride magazine, and had advertised at events such as bridal fairs.
- In the circumstances, I find that the average consumer for the Defendant's services would be any member of the general public in the UK who wished to organise entertainment for an event of some description, typically a wedding or similar celebration, or a corporate or charity event.
Distinctiveness of the trade mark
- I discuss the question of the descriptiveness of the Marks below in relation to the Counterclaim. The sign 'Casino de Monte-Carlo' is not intrinsically distinctive of casino services, being in part descriptive and in part indicative of the location of the casino. The mark 'Monte-Carlo' is also inherently of low distinctiveness, when used in relation to goods or services having a connection with Monaco. However, validity points aside, the Claimant's case is that both of the Registered Marks have acquired a reputation in the Community and in particular in the UK. This question is relevant to the claim that there has been infringement of the Casino de Monte-Carlo Mark under Art 9(1)(b) and of both Registered Marks under Art 9(1)(c). The evidence as to reputation is the same as the evidence of goodwill for the purposes of the passing off claim, and it is convenient to consider all of that evidence together here.
- The Claimant describes itself as the owner of the "world-famous Casino de Monte-Carlo" and claims that the Registered Marks have a reputation in the UK and across the Community which has arisen as a result of widespread advertising, promotion and use of the name Monte-Carlo, as well as of the Registered Marks. The Particulars of Claim give turnover figures for services provided in the Claimant's five casinos for the years 2007 to 2011, and set out the global advertising and marketing spend in relation to the casinos for the same period. Those figures do not, however, state how much (if any) of that turnover was generated by UK customers, nor how much of the global advertising budget related to the UK.
- The Claimant relies upon the following points pleaded in the Particulars of Claim, as amplified by the evidence of Mr van Peteghem:
i) prominent advertising at the annual Monaco Grand Prix which is said to be watched by a large television audience in the United Kingdom, with examples given from 2007 onwards and viewing figures for 2010-12. The evidence does not state when UK television first aired the race;
ii) sponsorship of sports events, such as the ATP Masters tennis tournament, in Monaco, with photographs of signage in 2008, and television viewing figures given only from 2007 onwards;
iii) the purchase and maintenance of thousands of domain names attracting hits from UK visitors, Facebook, Twitter and Instagram accounts – no specific dates were provided for these but, given their nature, I assume that they are relatively recent;
iv) ownership of various websites, including those at www.casinomontecarlo.com and www.montecarlocasinos.com; these appear to have been in operation since 2009 and 2011 respectively, and figures for total hits from the UK were given varying between 80,000 and 100,000 in 2009-2011;
v) its on-line gambling site, which has attracted 287 UK clients since its launch in 2011;
vi) advertising in UK newspapers and magazines "dating back to 1906"; the examples provided included two advertisements from 1906 in 'The Sketch' and 'The King', headed 'Monte Carlo', but with a large reference to 'the Casino of Monte Carlo' as well as other attractions at the resort, which it described as "The most marvellous place in the world, situated on the plateau facing the old rock of Monaco …". I can, I think, infer from the terms of the advertisements that these were UK publications, although I am not familiar with them, and no evidence was given about them or their circulation figures. Almost all of the further advertisements exhibited dated from 2008 onwards; most advertised SBM's various attractions, and many used the strapline 'Be Monte Carlo' and/or SBM's composite stylised mark:
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vii) mailshots, an English language electronic newsletter and a magazine, 'MonteCarlo Society' for which figures were given from 2010 – 2011. Mr van Peteghem's witness statement indicated that 1716 of the recipients of the e-news letter had .uk email addresses. That statement was not supported by the much shorter (2 page) list which he exhibited; on the contrary, it showed many addresses which were plainly German, Japanese etc. The circulation list exhibited for the SBM magazine showed only 7 UK recipients of the Autumn 2008 issue;
viii) the numbers of rooms booked at SBM's hotels by UK customers from 2008 – 2012, a total of about 81,000 'nights' across the 4 hotels;
ix) the numbers of UK citizens who played table games at the Casino de Monte-Carlo (and who therefore had to provide identification, none being necessary to visit other parts of the casino). There were a total of only 365 such visitors from 2007-2012: 71 in 2007, 58 in 2008, 57 in 2009 and 56 in 2010;
x) evidence of a partnership commencing in 2005 with a UK company providing gambling venues in the UK, giving their customers access to the Casino. No evidence was given as to how many (if any) UK customers took advantage of that possibility. The documents relating to that partnership included an advertisement which prominently used the name Monte Carlo but not (that I could read) the name 'Casino de Monte Carlo', and advertised 'Société des Bains de Mer Hotels, Spas & Casinos.' The evidence did not show where the advert was placed. Press coverage did not refer to either Registered Mark and a leaflet did not use the Casino de Monte Carlo Mark;
xi) press releases in English 'in large part aimed at UK publications and customers' and marketing materials in English sent to UK customers, with examples given for mainly from 2011- 2012. The numbers sent to the UK however appear to have been very low – a 2011 press release for a roulette competition was sent to 30 UK recipients, a 2012 advert for all of the casinos was sent to 20 UK recipients;
xii) references to the Casino de Monte-Carlo in popular culture, especially in films; and
xiii) references in guidebooks, examples of which were given from books published in 2012 and 2013 (without any evidence to show that the same features appeared in earlier editions) and in press travel articles.
- Mr van Peteghem's evidence of references to the Casino in popular culture was supported by the evidence of Ms Buky-Webster, who exhibited a few press-cuttings from UK newspapers and magazines published between June 2009 and 2012. They advertised the many attractions of Monte-Carlo without (that I can read) mention of the Casino de Monte-Carlo Mark. Some referred to 'The Monte Carlo Casino.' Ms Buky-Webster had watched a number of films making some reference to the casino and had found that shots showing the name of the casino appeared in three such films, including the 1995 Bond film 'Golden Eye,' whilst other films showed the interior or exterior of the casino without naming it. SBM submitted that her evidence showed that the Casino de Monte-Carlo was "instantly recognisable" in such films. However, to recognise the building, one must first know it, as Ms Buky-Webster accepted. It does not seem to me that the use of the building as a film location shows its repute, let alone any goodwill, in the UK; at best, her evidence proved that in 3 films the name of the casino was visible.
- The bulk of SBM's evidence thus related to the period from about 2007 onwards and much of it was from 2011-12. There were many references to 'Monte Carlo' in a variety of forms, many using the name in the stylised form shown above, many using it as the name of the destination or resort and/or referring to the whole range of SBM's business interests. Many advertisements, as Mr van Peteghem accepted, related to the "Monte Carlo experience" rather than to either of the Registered Marks, or the Claimant's casinos. As to evidence of use of the Casino de Monte-Carlo Mark, Mr Hammond pointed out that many of the documents did not refer to the 'Casino de Monte-Carlo'. There is a good deal of force in that comment. In many examples, where reference was made to any casino, this was to 'the Casinos de Monte-Carlo', 'Le Casino Monte Carlo' or 'Monte Carlo Casino'. More recent documents tended to refer specifically to the 'Casino de Monte-Carlo,' which may reflect Mr van Peteghem's influence, as he gave evidence that he had been trying to ensure that SBM's marketing made use of the Marks.
- Furthermore, much of the evidence related to activities not falling within the specifications of the Registered Marks. There was no evidence of any use of the Monte-Carlo Mark, whether before or after registration, in respect of any of the goods in Classes 9 and 28 within the specification of the Monte-Carlo Mark. There was no evidence that any reputation has been acquired in respect of or extended to such goods.
- In the circumstances, for the purposes of the application of Art 9(1)(c), I find that SBM has not proved that the Monte-Carlo Mark has a reputation within the Community. I consider below the separate question of the reputation or goodwill in the Monte-Carlo name in relation to other goods or services for the purposes of the passing off claim. Similarly, none of the evidence supports the acquisition of a reputation in relation to the goods in Classes 9 and 28 and the Class 35 services within the specification of the Casino de Monte-Carlo Mark. This leaves the Class 41 services for which that Mark has been protected in the EU since 26 November 2010. I do not consider that the bulk of the evidence supported the claim to a reputation in that exact mark, and evidence showing use of the Mark (as opposed to evidence of references to casinos in Monte Carlo) whether before or after it was registered was relatively thin.
- Nevertheless, the Mark has been used against a background of many years of the operation of casinos at Monte Carlo, and the Defendant realistically accepted that the average consumer in the UK would be aware of that fact and of the general reputation of the name Monte-Carlo for casinos. There was also some proof of use of the mark exactly as registered, both before and after registration, and it seems to me that such pre-registration use may be taken into account, as it would be if the proprietor was relying upon the proviso to Art 7(3).
- Mr Hammond submitted that the Claimant had been rather lackadaisical in protecting the Monte Carlo name; that it had 'missed the boat' at the advent of the internet age and had allowed the name to become diluted. He referred to an online gambling website www.casinomontecarlo.co.uk, registered to an address in Norway from 2005, but transferred to the Claimant in 2012. Whilst it may be somewhat surprising that SBM did not have earlier Monte Carlo marks or a wider range of Monte Carlo marks on which it wished to rely in these proceedings, I do not consider that Mr Hammond made good those criticisms, nor that there was evidence before me which showed that any reputation in the Casino de Monte-Carlo Mark had been lost or diluted. SBM certainly took many years to realise that the Defendant was trading in the manner which SBM now wishes to stop, but this was explained as due to prioritisation of its actions against various infringers.
- In the circumstances, I find that the average consumer in the UK who is reasonably well-informed and circumspect would be likely to make some association between the name Monte-Carlo and casinos, much as he might make a similar association between 'Las Vegas' and casinos. That would suggest that it would have been relatively easy for SBM to achieve an enhanced level of distinctiveness for such of the Class 41 services of the Casino de Monte-Carlo Mark as relate to gambling amongst that part of the public having an interest in such services. Given the evidence before me, in all the circumstances it would seem reasonable to infer that the use of the Casino de Monte-Carlo Mark had by the date of issue of these proceedings both enhanced its distinctiveness to some extent in respect of its Class 41 services for the purposes of the application of Art 9(1)(b), and acquired a reputation amongst a significant part of the public having an interest in gambling for such services, for the purposes of the application of Art 9 (1)(c).
Similarity of the Casino de Monte-Carlo Mark and the Defendant's signs
- The comparison of 'Monte Carlo Casino Entertainment' and 'Casino de Monte-Carlo' must compare the marks as a whole. The comparison needs to be carried out on a visual, aural and conceptual basis, but bearing in mind the dominant and distinctive elements of each mark. Mr Wilkinson argued that the distinctive and dominant component of the Casino de Monte-Carlo Mark is the name 'Monte-Carlo,' which he described as "a direct reference to the world-famous casino services offered by SBM." Certainly the word 'Casino' within the Mark is descriptive but 'Monte-Carlo' may also be taken as a descriptive term referring to the destination, and it is the whole mark which would seem likely to me to be taken as a reference to the casino, by anyone who knows of it (see above). In my view, therefore, neither the word 'casino' nor the name 'Monte-Carlo' predominates in the Mark. The words "Monte Carlo Casino" in the Defendant's trading name are however more dominant in the name than the descriptive word Entertainment, but the latter is not a negligible part of the name and must, in my view, be taken into account in the assessment of similarity of the marks.
- Visually, the Defendant's trading name is not very similar to the Mark, for although both of them include both the name 'Monte-Carlo' and the word 'Casino', the word order is reversed. The aural similarity between the marks is even lower, because the Mark starts with the word Casino and the signs with the word Monte Carlo, and also because of the presence of the aurally significant word Entertainment in the Defendant's trading name. Conceptually, in my view, they are rather more similar, although there is again some difference of emphasis given the inclusion of the word Entertainment in the Defendant's trading name. Overall, I find that there is a moderate level of similarity between them.
- Much the same comments may be made about the domain name www.montecarlocasino.co.uk, which has a higher level of similarity to the Mark due to the lack of the word 'entertainment' in it. The same goes for the email address used by the Defendant. Overall, I find that there is a reasonable level of similarity between them. As for the Defendant's Facebook page, to the extent that what is shown to the user is 'Fun Casino Monte Carlo' it appears to me, broadly for the reasons given above, that the sign is not very similar to the Mark. There was some rather confused evidence before me as to whether a sign closer to the Mark had been used to set up the Facebook page. I do not think I can take that point any further nor does it seem to me to be of significance if what the user sees is the 'Fun Casino …' phrase. The complaint made about the LinkedIn address appears to me to show use of a sign which is still less similar to the Mark, as is the twitter address which does not include the word 'casino' at all, but adds the number 1066 after the word 'montecarlo'. This in my view again renders it less similar to the Mark.
Similarity of services
- As I have said, for the purposes of Art 9(1)(b), reliance is placed only upon the Class 41 services, entertainment, providing casino facilities, gambling, etc. Where a mark is registered for a category of services which includes the services being provided under the Defendant's signs, the services must be treated as being identical: see Case T-385/03, Miles Handelsgesellschaft International mbH v OHIM, 'Biker Miles' [2005] E.C.R. II-2665. Although the Defendant is providing what it described as 'fun casino services' these are identical to the entertainment services within SBM's specification, and similar (if not strictly identical) to its gambling services.
Global assessment of the likelihood of confusion
- I must take all of those factors discussed above into consideration for the purpose of the global assessment of a likelihood of confusion between the Casino de Monte-Carlo Mark and the Defendant's signs. The services offered by the Defendant are identical to those for which the Casino de Monte-Carlo Mark is registered in Class 41, whilst the Defendant's signs are respectively moderately and reasonably similar to the Mark and the other uses complained of on the whole are moderately or only slightly similar to the Mark. I bear in mind that the lesser degree of similarity between the marks may be offset by the identity of the services. The enhanced distinctiveness of the Mark is also relevant.
- On the other hand, in my judgment the amount of attention which the average consumer of the Defendant's services would be likely to give to the choice of the Defendant's services would be relatively high. This is in part because of the price charged, but more particularly because the Defendant's services would normally be booked for a one-off event of some kind, all of which would be of some degree of importance to the customer, so that s/he would have an interest in ensuring that the Defendant's services would enhance that event. The consumer would therefore be very likely to exercise a good deal of care in choosing the Defendant over a competing business, or indeed over any alternative form of entertainment for his event, and would pay a higher than average level of attention to the transaction. Furthermore, these are not goods purchased over the counter or even over the internet, instead it seems clear that no transaction would be conducted without direct interaction between the Defendant and the client, in terms of discussion of the client's needs and wishes, the precise services to be provided and the price to be paid. I have set out above various extracts from the Defendant's website and some examples of its advertising practices, all of which in my judgment are likely to operate on the average consumer's mind in considering the Defendant's signs and the impression they are likely to make on him and all of which, in my view, would help to distinguish the Defendant's services from those of SBM.
- There was no evidence of confusion before me. It is well-established that a lack of evidence of actual confusion may not be determinative (see e.g. Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41 and Hasbro Inc v 123 Nahrmittel GmbH [2011] EWHC 199; [2011] FSR 21) but it is not necessarily irrelevant either (see e.g. Redd Solicitors LLP v Red Legal Ltd [2012] EWPCC 54 at [90]). The points made in paragraph [38] above militate, in my judgment, against a likelihood of confusion. In particular, the context of use by the Defendant of the signs complained of may go far to explain the lack of any evidence of actual confusion over 17 years of use of the trading name (and 13 years use of the domain name) by the Defendant and its predecessors in title, whether in terms of confusion with SBM's business, or the much more recently registered Casino de Monte-Carlo Mark.
- In this case, in my judgment, on balance, there is no likelihood of confusion on the part of the average consumer in the sense that there is a risk that the public might believe that the services come from the same undertaking or one which is economically linked to the Mark's proprietor. I see no reason why the average consumer would, as Mr. Wilkinson suggested, think that the Defendant's activities were licensed by SBM; despite the notional identity or similarity of the services, the full circumstances of use would in my judgment preclude any such likelihood of confusion. For these reasons, I dismiss the claim under Art 9(1)(b).
Infringement under Article 9 (1)(c)
- SBM seeks to rely on both of the Registered Marks to allege infringement under Art 9(1)(c). The basis for such infringement was recently set out by Arnold J in Interflora v M&S [2013] EWHC 1291, [2013] ETMR 35:
"187 In order for the use of a sign to infringe under Article 9(1)(c), four requirements must be satisfied. The first is that the trade mark has a reputation in the relevant territory. This is not in issue in the present case.
188 The second requirement is that the use of the sign complained of gives rise to a "link" between the sign and the trade 'mark in the mind of the average consumer, even if the average consumer does not confuse them. Again, this is not in issue in the present case.
189 The third requirement is that the trade 'mark proprietor must establish the existence of one of three kinds of injury, which were described by the Court of Justice in L'Oréal v Bellure as follows:
"37. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade 'marks with a reputation (see, to that effect, Intel Corporation, paragraphs 31 and 32).
38. Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27).
39. As regards detriment to the distinctive character of the mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29).
40. As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade 'mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.
41. As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade 'mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28)."
190 The Court of Justice had previously given guidance with regard to detriment to the distinctive character of the trade 'mark in the context of Article 4(4)(a) of the Directive in Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd [2008] ECR I-8823. In that case the Court held as follows:
i) The more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is detrimental to the distinctive character of the mark: [67].
ii) The stronger the earlier mark's distinctive character and reputation, the easier it will be to accept that detriment has been caused by it: [69].
iii) The existence of a link between the sign and the mark does not dispense the trade 'mark proprietor from having to prove actual and present injury to its mark, or a serious likelihood that such an injury will occur in the future: [71].
iv) The more "unique" the trade mark, the greater the likelihood that use of a later identical or similar mark will be detrimental to its distinctive character: [74].
v) Detriment to the distinctive character of the trade'mark is caused when the mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor is weakened. It follows that proof that the use of the sign is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the mark is registered consequent on the use of the sign, or a serious likelihood that such a change will occur in the future: [77].
191 The Court of Justice explained the correct approach to the determining whether unfair advantage has been taken of the trade mark in L'Oréal v Bellure as follows:
"44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).
45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
46. In the present case, it is a matter of agreement that Malaika and Starion use packaging and bottles similar to the marks with a reputation registered by L'Oréal and Others in order to market perfumes which constitute 'downmarket' imitations of the luxury fragrances for which those marks are registered and used.
47. In that regard, the referring court has held that there is a link between certain packaging used by Malaika and Starion, on the one hand, and certain marks relating to packaging and bottles belonging to L'Oréal and Others, on the other. In addition, it is apparent from the order for reference that that link confers a commercial advantage on the defendants in the main proceedings. It is also apparent from the order for reference that the similarity between those marks and the products marketed by Malaika and Starion was created intentionally in order to create an association in the mind of the public between fine fragrances and their imitations, with the aim of facilitating the marketing of those imitations.
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
50. In the light of the above, the answer to the fifth question is that Article 5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
- The final requirement is that the use of the sign must be "without due cause". The CJEU in Case C-232/09 Interflora v M & S [2012] FSR 3 said at [89-91] that "… use whereby the advertiser rides on the coat-tails of a trade mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige" must be considered to be unfair, but if such use did not cause dilution or tarnishment or adversely affect the functions of the trade mark it would not be without "due cause."
- The first requirement, therefore, is to show that the Registered Marks have a reputation. In the light of my finding that no reputation has been proved for the Monte-Carlo Mark it is not necessary for me to consider the point further in relation to it. However, for the reasons which are given above, I have concluded that the Casino de Monte-Carlo Mark has a reputation in relation to gambling services in Class 41 amongst a significant part of the public having an interest in such services.
- Next, SBM needs to show that use of the signs complained of gives rise to a "link" between the sign and the Mark in the mind of the average consumer, even if the average consumer does not confuse them, so that use of the Defendant's signs calls the Mark to mind. In my view it is possible that this Mark would be called to mind by the Defendant's signs but I do not consider that such a link would be made to the less similar Facebook page, Twitter account or Linked in account.
- That being so, the third requirement is that the trade mark proprietor must establish the existence of one of the three kinds of injury identified by the CJEU. SBM alleges that the injury would lie in taking unfair advantage of the Mark or would be detrimental to its distinctive character or repute. Although a number of particulars were pleaded of the allegation, none was more specific as to the manner in which such detriment would be caused. Mr van Peteghem's evidence was that SBM carefully controlled the use of its marks and it was his view that the presence of the Defendant and what he called "its budget business" on the internet, Facebook etc, using the Defendant's signs in a manner which could not be controlled by SBM, would be detrimental to SBM's business. It was his evidence that SBM seeks to maintain the reputation of its business as providing upmarket and exclusive experience holiday and leisure services. Nevertheless, I note, as did Mr Hammond, that all of SBM's casinos advertise slot machines, which I assume are less exclusive than the more upmarket gaming tables and private gaming rooms. On the other hand, if detriment may be caused when a mark's ability to identify the goods or services for which it is registered is weakened then I accept that it is possible that use of the Defendant's signs might cause detriment to the Casino de Monte-Carlo Mark. Indeed, as SBM submitted, Mr Hammond accepted as much when he suggested that third party activities had already diluted and weakened the Mark.
- SBM submitted that the only reason the Defendant is using its signs is to 'ride on the coat tails' of the reputation of the 'world-famous Casino de Monte-Carlo' and to exploit the marketing efforts of SBM 'over the last 150 years'. This, it argued, is a paradigm case of unfair advantage. Furthermore, it is admitted that the SEO and other changes made to the Defendant's online presence in 2011 was a "step-change" indicating an intention to take advantage of SBM's Marks. However, I do not accept those submissions. The Defendant and its predecessors in title had been using the signs for many years prior to registration of the Mark. Mr Hammond was cross-examined as to the steps which he had taken to maximise the Defendant's on-line presence late in 2011. He explained that by then he thought that SBM's complaint had been dropped and wanted to make an investment in the Defendant's business. The Defendant employed a consultant to advise it as to how it might raise its profile and drive business to the website, and had been given advice about search engine optimisation and the utilisation of various social media. This included the suggestion that the Defendant should 'grab' as many references as possible to 'Monte Carlo Casino' on the Internet. Use of the rather emotive term 'grab' seems to me to have been no more than a slangy way of describing the consultant's approach to SEO. I do not consider that it showed an intention to 'ride on the coat-tails' of SBM nor, given my views as to the similarity between the Facebook page, etc and the Marks, do I think that the steps taken in 2011 showed any such intention.
- Lastly, given my findings on detriment, I must consider the question of whether the Defendant has due cause to use its signs. Interflora indicates that where a sign is used in the context of fair competition, it may not be used without due cause. More recently, Advocate General Kokott has suggested in Case C-65/12, Leidseplein Beheer BV v Red Bull GmbH (Opinion of 21 March 2013, the Court's judgment is pending) that use of a sign which commenced before the mark was registered or acquired a reputation after registration, is a factor which may be taken into account in favour of the Defendant. As I find that there is no likelihood of confusion for Article 9(1)(b) and, for the reasons set out below I find that there is no misrepresentation made by the Defendant's use of the signs, in my view the Defendant is not competing unfairly with SBM by using the signs. The Defendant's use does not cause dilution or tarnishment or adversely affect the function of the Mark.
- The Defendant's predecessors in title chose the Defendant's signs many years before registration of the Casino de Monte-Carlo Mark, and they and the Defendant have since used them consistently in relation to the same business. In the circumstances, in my judgment, even if there is a possibility of detriment here, the Defendant's use is not without due cause. In the circumstances, the claim under Article 9(1)(c) fails.
Defences
- In case I am wrong in my conclusions as to the allegations of infringement under Art 9(1)(b) and/or (c), it is necessary to consider whether the Defendant has a defence arising from its lengthy use of its trading name.
- It is clear from the much amended Defence and the various case management orders made in these proceedings that Mr Hammond has struggled to find a pleadable defence or a basis for a counterclaim. He sought to rely on s 11(3) of the 1994 Act, but, as SBM says, that cannot help him in relation to infringement of a CTM. A similar problem applies to the attempt to rely on Art 8(4) of the CTMR. Mr Hammond referred to co-existence and concurrent use, and pleaded that use of the Defendant's signs had established its own goodwill and an earlier right in the UK, concluding "an earlier usage right combined with defences of co-existence and estoppel by acquiescence, when taken individually or together, give rise to the unequivocal right of the Defendant to carry on business using the name Monte Carlo Casino Entertainment." That claim is repeated as a defence to all of the alleged infringements. A further defence based on honest concurrent use was struck out in December 2012 (I believe on the basis that Mr Hammond had relied on section 7 of the 1994 Act, which does not provide for a defence, but relates to concurrent registrations of UK marks). An attempt to have the defence reinstated just before trial failed.
- At trial, Mr Hammond put his defence based on that earlier use as establishing a concurrent right. He relied upon the judgment of Norris J in Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2008] EWHC 263 (Ch), [2008] R.P.C. 21. However, that decision was appealed, and the Court of Appeal referred questions to the CJEU as to the scope of statutory acquiescence and the doctrine of honest concurrent use (see [2010] RPC 7). The CJEU's decision in Case C-482/09, reported at [2012] RPC 11, was applied by the Court of Appeal, see [2013] RPC 12. However, as the decision related to 'statutory' acquiescence, which does not apply here, and to honest concurrent use, reliance upon which has expressly been excluded by the case management decisions in this case, I do not think that this case can help the Defendant.
- The Defendant also sought to make out a case of common law acquiescence. It would have to show that it would be unconscionable for SBM now to seek to enforce its rights (see in the trade mark context e.g. Jacob LJ in the same Bud case at [2010] RPC 7 at [32]). However, the Defendant had no reason to think that SBM had acquiesced in the use of the trading name at any time from 1995 to 2011, nor did any act or omission on SBM's part induce the Defendant to pursue its activities. SBM had in fact learned of its existence in 2006 but did not communicate with the Defendant until it wrote its letter of claim in 2011. The defence of acquiescence cannot, therefore, apply to any earlier period. Mr Hammond said that his marketing activities in late 2011 were done in the belief that SBM was not pursuing its claim, but it does not seem to me that such belief was engendered by anything done by SBM such that it would be unconscionable for SBM to bring these proceedings.
- Nevertheless, one of the issues to be decided at this trial, as identified in the case management order dated 21 December 2012, and as pleaded, was the issue of the Defendant's 'earlier rights' and its claim to have the right to continue making use of its trading name. In Football Dataco Ltd v Sportradar GmbH [2011] 1 FSR 20, Jacob LJ said at [27]:
"English procedural law says that if you allege in your pleading facts which, if proved, would establish a cause of action, that is sufficient to support a claim for that cause of action: see e.g. Letang v Cooper [1965] 1 QB 232 and In re Vandervell's Trusts (No 2) [1974] Ch 269, 321. You do not have to spell out precisely the legal basis of the cause of action. "Pleadings" in England have a technical meaning. They are the documents which contain the assertions of fact which the party intends in due course to prove by evidence. They do not need to include arguments of law and seldom do. ..."
- That is the general position as to statements of case under CPR 16, although a defendant may choose to plead any point of law on which it relies. CPR 63.20, by contrast, which applies to proceedings in this Court provides "… a statement of case must set out concisely all the facts and arguments upon which the party serving it relies." That is reiterated in the PCC Guide. The need to plead both the facts on which one relies and one's arguments ought not, in my view, to detract from the principle set out by Jacob LJ nor be construed as requiring a party to plead the law on which he relies. The same approach was taken in Frost Products Limited v F C Frost Limited [2013] EWPCC 34, 26 July 2013, by Vos J (sitting as a judge of the PCC). He held at [122] that the Defendant would not (had it been necessary to do so) have needed expressly to plead reliance on Article 111(3) CTMR, having pleaded the relevant facts and stated that it relied on its common law rights in the sign. Had it been necessary to do so he would have permitted the Defendant to rely upon that provision.
- Where a party, and especially an unrepresented party, has alleged facts which, if proved, would provide him with a good defence to an action, and has sought to rely on those facts as a defence, though putting forward arguments about the wrong legal principle, it would seem to me to be consistent with the interests of justice, bearing in mind the guidance of Jacob LJ to give effect to that defence. It seems to me that I should not, therefore, neglect to consider any potential defence which is apparent to me on the basis of the pleaded facts, or which flows from the identified issue of the Defendant's earlier rights unless, on the facts of the particular case, giving effect to such a defence would prejudice the other party. This seems to me to be the right approach even in making allowance for the special rules of pleading in the PCC, as shown by Vos J's judgment in Frost.
- On reading the Defence, it appeared to me that the Defendant's reliance on its earlier rights, that is to say, its reliance upon its (and its predecessors in title's) many years of trading under the Defendant's name, might, if proved, support a claim to a defence under Art 12 of the CTMR. This provides:
"A community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
…
Provided he uses them in accordance with honest practices in industrial or commercial matters."
- I raised the possibility that the Defendant might have a good defence under Art 12(a) of the CTMR with Mr Wilkinson, who therefore addressed me on this point in closing, and I am grateful to him for his pragmatic approach and for his additional submissions on this point. It was not disputed that a name relied upon for the purposes of Art. 12 can be a trading name, as well as the name of a natural of legal person: see Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd both at first instance [2009] RPC 9 and on appeal at [2010] RPC 16 at [59-72].
- Arnold J reviewed the law with respect to honest practices in Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2012] FSR 7 at [114]–[120]
"[114] First, the requirement to act in accordance with honest practices in industrial or commercial matters "constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor": …
[115] Secondly, the court should "carry out an overall assessment of all the relevant circumstances", and in particular should assess whether the defendant "can be regarded as unfairly competing with the proprietor of the trade mark": …
[116] Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices: ...
[117] Fourthly, a mere likelihood of confusion will not disqualify the use from being in accordance with honest practices if there is a good reason why such a likelihood of confusion should be tolerated ...
118 In applying these principles in Cipriani [2008] EWHC 3032 (Ch), Och-Ziff [2011] FSR 11 and Datacard [2011] RPC 17 , it can be seen that I have treated the following factors as material:
i) whether the defendant knew of the existence of the trade mark, and if not whether it would have been reasonable for it to conduct a search;
ii) whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions;
iii) the nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant's goods or services;
iv) whether the defendant knew that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object;
v) whether the defendant knew, or should have appreciated, that there was a likelihood of confusion;
vi) whether there has been actual confusion, and if so whether the defendant knew this;
vii) whether the trade mark has a reputation, and if so whether the defendant knew this and whether the defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected;
viii) whether the defendant's use of the sign complained of interferes with the owner's ability to exploit the trade mark;
ix) whether the defendant has a sufficient justification for using the sign complained of; and
x) the timing of the complaint from the trade mark owner.
- Applying those factors here:
i) Did the Defendant know of the existence of the trade mark, and if not would it have been reasonable for it to conduct a search? There are several points here:
(a) The trading name was chosen in about 1995 by Mr and Mrs Hobbs, the Defendant's predecessors in title. There was no evidence before me as to the circumstances in which the trading name was chosen, hardly surprisingly as neither party was aware of such circumstances.
b) Whilst it might have been proper to have undertaken a trade mark search in 1995, in the light of the accepted renown of Monte-Carlo for casinos, no-one now involved knows what investigations (if any) may have been carried out by Mr and Mrs Hobbs.
c) However, SBM has produced no evidence that it had any registered trade mark rights valid in the UK prior to Mr and Mrs Hobbs' choice of the Defendant's trade name. The only registered rights relied upon are the Registered Marks, which are of far later date. Indeed, so far as I can see, none of the other registered marks listed in the letter of claim of 17 February 2011 or in the follow-up letter of 11 March 2011 had been registered or claimed a priority date any earlier than 1996 - most were of far later date. Mr Hammond exhibited to the Counterclaim some searches which he had carried out of the WIPO register; those showed quite a number of marks containing the name Monte-Carlo, but none that I could see that were relevant in particular in terms of the filing date of the registration.
d) As a result, had Mr and Mrs Hobbs carried out a trade mark search in 1995, there is no evidence before me to suggest that they would have come across any rights owned by SBM which might have caused an honest trader to consider it inappropriate to adopt the Monte Carlo Casino Entertainment trade name. I am not therefore prepared to infer that the choice of the trading name in 1995 was less than honest.
e) As for the Defendant's own position, there was no evidence before me to suggest that it acted other than honestly. It took over an existing business in 2002 with an existing trading name and there was no evidence suggesting that it should have been alerted to a clash with any rights belonging to SBM (certainly none had been intimated by SBM). On the contrary, Mr Hammond's evidence was that whilst he knew that Monte Carlo was known for its casino, rather like Las Vegas, until this case arose he had thought that the casino was called 'Casino Royale,' as in the James Bond film and book. I see no reason to disbelieve that evidence, especially as he accepted that Monte Carlo was known for its casinos.
f) If the Defendant had checked the register in October 2002, it might have come across the 2002 Casino de Monte-Carlo mark mentioned in SBM's solicitors' letter of 11 March 2011. That mark was registered for education; training; entertainment; sporting and cultural activities in Class 41. However, the mark is, as I have found, only moderately similar to the trading name of the business which the Defendant was intending to buy, and in the circumstances it does not seem to me that it ought to have been alerted to the possibility that use of the trading name might have infringed SBM's rights such that that the decision to buy the business, and continue using a trading name which had been in use for 7 years before that mark was registered, was not in accordance with honest practices.
g) Another point as to the honesty of the Defendant's use related to the SEO activities mentioned above. Again, nothing in the advice to 'grab' references to 'Monte Carlo Casino' on the web suggests to me that the Defendant was acting less than honestly in seeking to increase its internet presence in 2011 by reference to the trading name which had been used since 1995 and its domain name (and email addresses etc) also used for many years.
ii) Did the Defendant use the sign complained of in reliance on competent legal advice based on proper instructions? No-one knows the position in 1995; it seems doubtful that the Defendant has taken any such advice.
iii) The nature of the use complained of, and in particular the extent to which it is used as a trade mark for the Defendant's goods or services: The nature of the use is described above; it is trade mark use and is 'upfront' use, with use of various permutations of the name to promote the business. SBM complained about the Defendant's more recent use of permutations of the name on Facebook etc, and it is right that a trader who knows of another's rights should take care not to expand his business so as to cause confusion where none arose before. However, given my findings as to the lack of any likelihood of confusion arising from the changes made in 2011, I do not consider that the Defendant's decision to make such uses meant that it acted unfairly towards SBM or was less than objectively honest.
iv) Did the Defendant know that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object? No. The Defendant had no knowledge of any objection and in my judgment had no reason to anticipate such an objection until 2011.
v) Did the Defendant know, or should have appreciated, that there was a likelihood of confusion? Given my findings as to likelihood of confusion, there was no reason for the Defendant to have anticipated it.
vi) Has there been actual confusion, and if so whether the Defendant knew this? No
vii) Has the trade mark a reputation, and if so whether the Defendant knew this and whether the Defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected? I have found a reputation only for the Casino de Monte Carlo Mark, but the Mark and the reputation significantly post-dates the choice of the Defendant's trading name, so there can have been no such appreciation at that date.
viii) Does the Defendant's use of the sign complained of interfere with the owner's ability to exploit the trade mark? I consider this highly unlikely given the nature of the Defendant's business.
ix) Does the Defendant have a sufficient justification for using the sign complained of? The use appears to me to be justified by the long-term use of it without complaint, confusion or damage coming to light.
x) The timing of the complaint from the trade mark owner. Here, the complaint was made first some 16 years after first use of the trading name.
- At my request, Mr Wilkinson also addressed me on the decision of HHJ Birss (as he then was) in Redd (supra) in which one issue was the honesty of choice of the Defendant's trading name, which was found to infringe the Claimant's trade marks. There the 'upfront' nature of the Defendant's use of the name and the failure to carry out trade mark or other searches when the name was chosen, which would have revealed the Claimant's marks, were held to militate against the Defendant's use being in accordance with honest practices – it was not fair competition. In this case too, the 'upfront' nature of the Defendant's use of the signs complained of weighs most heavily against the application of the defence, as the name is not used purely formally to identify the business (see the distinction made by Arnold J in Cipriani at [158]) but as the trade name. However, as Mr Wilkinson accepted, the distinction may matter more for a new business than for one which is well-established. In my judgment, the other factors set out above far outweigh the 'upfront' point, especially as SBM has provided no evidence that any trade mark was registered in the UK in 1995 which would have come to light had proper searches been done then, and the Defendant has never been aware of any confusion or damage caused by its use of the name. I conclude that the Defendant has at all times been using its own trading name in accordance with honest practices and would (if necessary) have had a good defence under Article 12(a).
- I have considered carefully the question of whether SBM might have conducted this litigation and the trial differently had the Defendant specifically pleaded an Article 12 defence, such that permitting the Defendant to rely on the defence in the absence of a clear claim to that effect would be unfair. It does not seem to me that SBM would have conducted the trial differently or would have produced different evidence had that been the case. Mr Wilkinson submitted that it was not made plain that the Defendant was taking any point that the 1995 date was relevant. I do not accept that submission. The main thrust of the Defence, much repeated, was the reliance upon many years of uninterrupted trading by the Defendant and its predecessors in title. Although the Defendant may have failed to identify properly the legal consequences flowing from such use of the Defendant's signs, SBM cannot have failed to appreciate its reliance on that use and the significance of the 1995 date as the "start date" of such use. Its failure to provide direct evidence as to existence/use of any of its registered marks or as to its goodwill in the UK at and in advance of 1995, which might have been relevant in terms of assessing the honesty of Mr and Mrs Hobbs' choice of the trading name, cannot in my view be blamed on the inadequacies of the Defence.
- For those reasons, it does not seem to me unfair to SBM to make a finding that (if required) the Defendant would have had a defence under Art 12(a) in respect of use of its trading name.
The claim to passing off
- The elements for a claim in passing off were restated by the House of Lords in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 as follows:
(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;
(2) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
(3) the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.
- The Defendant put SBM to proof of its claim to have goodwill in the UK upon which to base its passing off claim. The goodwill which SBM relied upon related to its casino services – not to its wider business in hotels and leisure activities - as it had pleaded that when members of the public in the UK see casino services marketed under and by reference to the Registered Marks, they expect them to be SBM's services.
- It is well-established law that the relevant date for the purpose of assessing a claim for passing off is the date of inception of the use complained of: see Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429 at 494 and Inter Lotto (UK) Ltd v Camelot Group Plc [2004] R.P.C. 9 at [7]. Hence, the relevant date here is some time in 1995, when Mr & Mrs Hobbs chose the trading name.
- SBM faced two challenges in proving the necessary goodwill: (a) to show that it had such goodwill in the UK despite being a foreign corporation which has never traded in the UK and (b) to prove that it had such goodwill in 1995.
- In Hotel Cipriani (supra) at [38] Lloyd LJ said:
"38 … Whether a business based abroad has a reputation in this country is a question of fact. Absent such a reputation, it can have no goodwill. If it does have a reputation here, it is likely also to have goodwill, but that depends (speaking in very general terms for the present) on the nature and extent of any business activity which it carries out here. I will consider later the test applicable under English law as to what is required for this purpose. For the moment it is sufficient to say that, if its business is in the sale of ordinary retail goods for domestic consumption (e.g. cans of beer) it does not have goodwill here if its products are not available for sale to the public here: Anheuser-Busch Inc v Budejovicky Budvar NP [1984] F.S.R. 413 (which I will call Budweiser ). How that applies to a business which supplies services, and which only does so at its own place of business abroad, is less clear; I will revert to that point."
- In that case, the Defendant (which had opened a restaurant in London using the Cipriani name) claimed that there was goodwill in the UK for restaurants (which it could claim) arising from a range of Cipriani restaurants abroad, whilst the Claimant claimed goodwill arising from Cipriani hotels abroad. Arnold J had found the Claimant but not the Defendant had UK goodwill, by reference to numbers of hotel rooms booked by UK guests from the UK, at the relevant dates. Lloyd LJ approved, in particular (see [47]) because he found it more likely that there would be direct bookings from abroad for a hotel than for a restaurant. The Defendant, by contrast, had adduced no evidence of direct bookings by telephone or otherwise from abroad at the relevant date, and there was no particular reason to infer that there would have been such bookings. The only evidence adduced was of the exposure of the New York restaurants in the media mostly dating from after the date which was relevant for the proceedings.
- Lloyd LJ went on:
"113 In the present case, Arnold J. reviewed the cases, including Pete Waterman, and summarised the position in six propositions of which I need only quote from the fifth and sixth:
"216. Fifthly, it is sufficient for goodwill to exist in the United Kingdom that the claimant has customers or ultimate consumers for his goods here, and for this purpose it is immaterial whether the claimant (a) has some branch here or (b) trades directly with customers here without having any physical presence in the jurisdiction (for example, by mail order) or (c) trades through intermediaries such as importers and distributors (provided that the circumstances are not such that the goodwill is owned by the intermediary) …
217. Sixthly, in the case of claimants who provide services which are physically performed abroad, it is sufficient for goodwill to exist in the United Kingdom that the services are booked by customers from here …"
114 He then pointed out that Browne-Wilkinson VC had gone further, holding that it was sufficient for goodwill to exist in the UK that a foreign service provider has customers here, whether or not their business is placed directly from this country. Arnold J. said that he agreed with this, but that it was not necessary to go further than his sixth proposition in order to decide the case, because there were bookings from this country to Hotel Cipriani, both directly and via travel agents and tour operators. On that basis he held that the first claimant had proved that it had not merely a substantial reputation but also a valuable goodwill in this jurisdiction in respect of the name Cipriani.
…
116 …, Mr Thorley's remaining argument on passing-off is that either the judge's finding of goodwill on the part of the first claimant was wrong because there was no sufficient business activity or connection in this country, or his failure to find goodwill on the part of the Cipriani group was wrong because he applied the wrong legal test as regards goodwill. In that way his submissions seek to test the question of law as to what is necessary for the reputation of a business abroad and its mark to qualify as goodwill in this country in two ways: first, is what the claimant can show sufficient? Secondly, if it is, why is that which the defendants can show not sufficient (as the judge held)?
117 In Budweiser in relation to sales of beer, the court regarded it as necessary that, in addition to an international reputation, there should have been significant sales of the product in this country. How does the matter stand when one is considering not goods but services? As pointed out by Wadlow in The Law of Passing-off, 3rd ed (2004) at para. 3-80, service businesses are of several different kinds. There are those, such as hotels and restaurants, and recording studios, where the service is supplied at the premises of the supplier. Others may necessarily be supplied at the premises of the customer. Others may be supplied at any suitable place where both supplier and customer are present. Yet others (including much professional advice) may not depend on location at all. The same test may not be appropriate for each kind of service, unless it is expressed at a fairly high level of generality. Wadlow proposes a test as follows:
"It is now suggested that a service business operating from a place or places abroad has customers and therefore goodwill in England to the extent that persons from England consciously seek out and make use of its services in preference to those available from competitors in England or elsewhere. So the foreign business has goodwill here if English residents are prepared to go to it (literally or figuratively) to avail themselves of its services, or if the availability of those services abroad is a material factor in their travelling to wherever the services can be acquired or experienced."
118 That is an interesting proposition which might provide a suitable line of distinction between businesses abroad with a genuinely international reputation and clientele, on the one hand, and those which have English customers abroad, and therefore may be known of in this country, but whose reputation here does not in practice bring in significant custom from the public in England. However, it does not seem to me that it is necessary or appropriate to adopt a general principle such as that in order to decide this appeal. Like the judge, I would hold that the first claimant did have goodwill here on the basis that, in April 2004 (the relevant moment for passing-off) it had a substantial reputation in England and a substantial body of customers from England, in part as a result of significant marketing efforts directed at the relevant public here, and a significant volume of business was placed directly from this country, either by individual clients by telephone or the like, or via travel agents or tour operators. On that basis it seems to me clear that the international reputation of Hotel Cipriani, and the use of the mark Cipriani, was something that brought in business from England — it was an attractive force that brought in English custom - and accordingly the business had goodwill in England at the relevant time.
119 Turning then to the defendants and the Cipriani group, on the judge's findings the defendants showed that Harry's Bar had a significant number of English customers, and that it had a substantial reputation in England, but not that it had a sufficient association with the mark Cipriani. That, therefore, could not justify a finding of goodwill in England in relation to the Cipriani mark.
120 As for the New York Cipriani restaurants, despite some slight reputation in England, they failed to prove any significant English custom at the relevant time. The evidence relied on by the defendants in this respect, to which I have referred at para.[47] above, was very limited and indirect, and I am not surprised that the judge found it of little assistance or persuasive weight. That too, therefore, is inadequate to show that the name Cipriani brought in any worthwhile English custom to the Cipriani restaurants in New York.
121 It seems to me that it must be necessary to show more than this in order to establish goodwill in England for a mark used by a business based abroad for services which it supplies abroad. Therefore, whatever test might be applied to determine whether a business supplying services abroad which has a reputation in England also has goodwill in England, the defendants do not satisfy it."
- The position was summarised pithily by Vos J in Frost (supra) at [89]:
"Recent cases have made clear that reputation and goodwill are not the same. It is as well to remember, as Oliver LJ re-stated in Anheuser-Busch Inc v. Budejovicky Budvar NP [1984] FSR 413 that goodwill cannot exist in a vacuum, whilst mere reputation may exist without any supporting local business. Moreover, reputation does not constitute property which the law protects."
- I have summarised at [25] above the evidence produced by SBM as to its reputation and goodwill in the UK. It is notable how very little of that evidence related to any date prior to 2005, and most was even more recent. There was also remarkably little evidence of UK customers for the casinos (as opposed to SBM's other businesses). There was no evidence that the partnership from 2005 (mentioned in 25(x)) had generated a single UK customer, whether for the casinos or any of the other attractions advertised. The figures produced for recent years are for very small numbers of players at the Casino de Monte-Carlo, although I accept the evidence that an unknown number of other UK visitors may have visited the casino whilst in Monte Carlo. More particularly, there was no evidence at all to show that any business was placed from this country for SBM's casinos prior to 1995, either by individual clients by telephone or otherwise, or via travel agents or tour operators, and no evidence from which I consider that I can find that such direct bookings would be likely to be made, in contrast to SBM's hotel business.
- I raised my concerns on this point at trial, and was invited to infer that there would have been such bookings. I decline to do so. SBM pointed to a number of matters which it said showed that there had been UK customers for the period up to 1995. They referred to an extract from a book published by SBM itself, which mentioned that King Edward VII and Winston Churchill were amongst its clients, and relied upon the evidence as to use in films, etc. Such evidence of a few UK clients from many years ago is not sufficient to show goodwill or a continuing goodwill in 1995. Evidence of the exposure of the Casino in the media was not only negligible for any date prior to 1995, but in my view the evidence went no further than to show a reputation without any 'supporting local business.' For that reason alone, the passing off claim must fail.
- In case I am wrong on that point, however, I need to consider whether the Defendant's activities give rise to an actionable misrepresentation. Mr Wilkinson sought to persuade me that 'mere confusion' would suffice to establish passing off, but I cannot accept that submission. Birss J said recently (indeed, just after the trial of this action) in Fenty v Arcadia [2013] EWHC 2310 at [35]
"35 … For passing off to succeed there must be a misrepresentation about trade origin. Mr Hobbs rightly referred me to the words of Jacob J (as he then was) in Hodgkinson v Wards Mobility [1995] FSR 169 and of the Court of Appeal in Harrods v Harrodian School [1996] RPC 697 about the significance of deception in passing off. Jacob J emphasised that the tort of passing off has never shown even a slight tendency to stray away beyond cases of deception. Millett LJ (as he then was) stated that it was not sufficient to demonstrate that the public would think there was a connection of some kind between the defendant and the claimant, if it is not a connection which would lead the public to suppose that the claimant has made him or herself responsible for the quality of the defendant's goods or articles."
- Birss J also referred to [16-23] of the judgment of Jacob LJ in Phones 4U v Phone4U.co.uk [2007] RPC 5 on "mere confusion" where he said at [16 ff]:
"16 … Sometimes a distinction is drawn between "mere confusion" which is not enough, and "deception," which is. I described the difference as "elusive" in Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40. I said this, [111]:
"Once the position strays into misleading a substantial number of people (going from 'I wonder if there is a connection' to 'I assume there is a connection') there will be passing off, whether the use is as a business name or a trade mark on goods."
17 This of course is a question of degree—there will be some mere wonderers and some assumers—there will normally (see below) be passing off if there is a substantial number of the latter even if there is also a substantial number of the former.
18 The current (2005) edition of Kerly contains a discussion of the distinction at paras 15–043 to 15–045. It is suggested that:
"The real distinction between mere confusion and deception lies in their causative effects. Mere confusion has no causative effect (other than to confuse lawyers and their clients) whereas, if in answer to the question: 'what moves the public to buy?', the insignia complained of is identified, then it is a case of deception."
19 Although correct as far as it goes, I do not endorse that as a complete statement of the position. Clearly if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too—for instance those in the Buttercup case. A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant's goodwill or divert trade from him. I emphasise the word "really."
20 HFC Bank Plc v Midland Bank Plc [2000] F.S.R. 176, … is a case about "mere confusion". The claimant Bank was known, but not very well known, as HFC. It sought to restrain the Midland with its very many branches from changing its name to HSBC. That was said to be passing off. It relied upon some 1,200 instances of alleged deception. Lloyd J. analysed the ten best (pp.189–104). None really amounted to deception. And in any event, given the scale of the parties' respective operations, the totality of what was relied upon was trivial. The case was one on its facts. It decided no question of principle.
21 In this discussion of "deception/confusion" it should be remembered that there are cases where what at first sight may look like deception and indeed will involve deception, is nonetheless justified in law. I have in mind cases of honest concurrent use and very descriptive marks. Sometimes such cases are described as "mere confusion" but they are not really—they are cases of tolerated deception or a tolerated level of deception.
22 An example of the former is the old case of Dent v Turpin (1861) 2 J&H 139. Father Dent had two clock shops, one in the City, the other in the West End. He bequeathed one to each son—which resulted in two clock businesses each called Dent. Neither could stop the other; each could stop a third party (a villain rather appropriately named Turpin) from using "Dent" for such a business. A member of the public who only knew of one of the two businesses would assume that the other was part of it—he would be deceived. Yet passing off would not lie for one son against the other because of the positive right of the other business. However it would lie against the third party usurper."
- I have come to the conclusion that no misrepresentation was made by the Defendant, whether by use of the trading name or any of the other signs of which complaint is now made. I have discussed the nature of the use made by the Defendant, the manner in which it describes its business, and the context in which its business is promoted. I do not consider that anyone viewing the website, Facebook page, advertisements etc would be likely to think that the Defendant is connected in any way with SBM. There is no evidence of either confusion or deception and whilst a lack of such evidence may not be determinative in a case in which it might well not have come to light, it is not irrelevant. I consider that it would be wrong to infer that instances of confusion, let alone deception, must have occurred or are liable to occur, after such a lengthy period of trading in all the circumstances described above. For those reasons, I dismiss the passing off claim.
The counterclaim
- The Defendant counterclaimed for invalidity of the Registered Marks on absolute grounds on the basis of Art 7(1)(b) and(c) of the CTMR. It alleged that the Monte Carlo Mark was a geographical term and that the Casino de Monte-Carlo Mark combined this with the purely descriptive word 'casino.' SBM refuted the claim under both articles and also claimed the Registered Marks had acquired distinctiveness, relying on Art 7(3). 'Casino' would of course be descriptive of casino services but is not used alone, so that the real issue turned on the objection based on use of the allegedly geographical name Monte Carlo. In this regard, SBM's first argument was to suggest that 'Monte Carlo' was not a geographical name because it was just the name given to the area of land on which the Casino was built in 1866. I reject that argument. Although the area may not have been called Monte Carlo prior to 1866, it plainly has been called that ever since, and it is abundantly clear from the evidence before me that Monte Carlo is used as a geographical name both by SBM and by third parties, it has been used in that manner since at least 1906 as the Claimant's earliest advertisement shows, and it would be understood as such by the average public in the UK.
- The objection on absolute grounds based on Art 7(1)(c) does not prevent the registration of a geographical name for any category of goods or services, but depends on whether it is a name which should be kept free for use by any party wishing to sell or provide particular categories of goods or services. This was made clear by the CJEU in Cases C-108 and 109/07, Windsurfing Chiemsee [2000] Ch 523; at [31-2] it said that the question is
"31 … whether a geographical name in respect of which application for registration as a trade mark is made designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future.
32. In the latter case, when assessing whether the geographical name is capable, in the mind of the relevant class of persons, of designating the origin of the category of goods in question, regard must be had more particularly to the degree of familiarity amongst such persons with that name, with the characteristics of the place designated by the name, and with the category of goods concerned."
- The CJEU also considered acquired distinctiveness for this purpose, finding at [47] that the question is whether through use, the Mark has come to identify the product as originating from a particular undertaking, such that "the geographical designation has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark"
- It is not sufficient, therefore, that I find that Monte Carlo is a geographical name but it must be a name which is or would be associated with the particular goods or services within the specification of the Marks attacked. There was no evidence before me to suggest that the public would see the name as indicating the geographical origin of computer programs and software, or the Class 28 goods in the Monte Carlo Mark specification, and I do not consider that the matter is so clear that I should infer that such an association would be made in the absence of any such evidence. The same applies to the goods in Classes 9 and 28 of the Casino de Monte-Carlo Mark. The services within that registration both in Classes 35 and 41 relate (with the exception of entertainment) to casino gaming or gambling of some kind. As to entertainment, again I do not consider that I should draw an inference that the Mark is invalid. As to the gambling services, for the reasons given above, it appears to me that a reputation has been acquired for the Casino de Monte-Carlo Mark in relation to those services, so that the proviso in Art 7(3) applies to it: it is no longer purely descriptive. I therefore reject the counterclaim based on absolute grounds.
- At the beginning of the trial I indicated to Mr Wilkinson my concern that the thrust of the Defendant's defence based on its earlier rights showed that the application for a declaration of invalidity of the Registered Marks should have been made on the basis of Article 53, not Article 52. He very fairly accepted that no new evidence would have been required to rule on the point, but submitted that it would be wrong, on the facts, to permit the Defendant to expand its counterclaim in that way. Having been shown the correspondence and taken through the case management decisions as to the genesis of the counterclaim, it seems to me that it would be not be fair to SBM to read the whole Defence and Counterclaim on that basis, and I will not do so.
- For all these reasons, I will dismiss the claim and the counterclaim.
