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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Thomson Holidays Ltd. v Norwegian Cruise Line Ltd. [2002] EWCA Civ 1828 (17 December 2002) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2002/1828.html Cite as: [2002] EWCA Civ 1828, [2003] RPC 32 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
Mr DAVID YOUNG QC (SITTING AS A DEPUTY
JUDGE OF THE CHANCERY DIVISION)
Strand, London, WC2A 2LL | ||
B e f o r e :
LORD JUSTICE WALLER
and
LORD JUSTICE SCOTT BAKER
____________________
| THOMSON HOLIDAYS LIMITED | Appellant/ Claimant | |
| - and - | ||
| NORWEGIAN CRUISE LINE LIMITED | Respondent/Defendant |
____________________
Michael Bloch QC and John Hornby (instructed by Clifford Chance) for the Respondent
____________________
Crown Copyright ©
Lord Justice Aldous:
Trade Mark Number Services
| 1,288,949 (the 949 mark) |
Arrangement and booking of travel, tours and cruises; escorting travellers and arranging the escorting of travellers; providing tourist office services; all including in Class 39. |
| 1,288,951 (the 951 mark) | Booking and provision of accommodation, catering services for travellers; providing of day nurseries (other than schools); leasing and rental of computers; all included in Class 42. |
"1,288,949: Arrangement and booking of travel and tours
and cruises;escorting travellers and arranging the escorting of travellers; providing tourist office services; all included in Class 39 and all excluding services in relation to cruises on a cruise ship.
1,288,951: Booking and provision of accommodation,
catering services for travellers;provision of day nurseries (other than schools);leasing and rental of computers;all included in Class 42 and all excluding services in relation to cruises on a cruise ship."
"(a) in the case of trade mark number 1288949, it covers cruises; and
(b) in the case of trade mark number 12888951, it covers cruises, day nurseries (other than schools) and the leasing and rental of computers."
"s 46 Revocation of registration. (1) The registration of a trade mark may be revoked on any of the following grounds-- (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non- use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; ... (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. (6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from-- (a) the date of the application for revocation, or (b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date."
"3. The Claimants first used their FREESTYLE mark as a brand for summer package holidays for the youth market in 1985. Youth market refers to those particularly between the ages of 18 and 30 years and indeed FREESTYLE holidays' main competitor has been Club 18-30.
Sales of holidays in the years 1985 to 1988 were relatively modest in terms of numbers and as a result use of the FREESTYLE brand for such holidays was effectively discontinued until 1993 when it was reintroduced under the style CLUB FREESTYLE at first as part of Sky Tours Holidays programme but latterly (as of 1998) on its own having its own brochure and featuring package holidays to fourteen or so resorts. Use of the word CLUB (generally in smaller print and not always juxtaposed to FREESTYLE) is to denote that the holiday is for a group of like-minded people as well as providing a "clubbers" image. There is no upper age limit but there is an age limit of 17 (with parental consent and if accompanied by some one of 18 or over).
A feature of such "Club Freestyle" holidays is that the hotel accommodation provided is generally exclusive to Club Freestyle holidaymakers. Representatives (reps) are at hand to assist in providing entertainment such as excursions including jeep safaris, day boat trips (referred to as "booze cruises" or Boat BBQ and "chill out cruises"), Freestyle Frenzy (bar crawls) etc.
In addition to such summer package holidays, since 1998 the Claimants have also sold winter Club Freestyle ski holidays marketed by Thomson Ski and Snowboarding which is a division of the Claimants. Details of such ski-holidays are incorporated in the Claimants' Ski Board Snow brochure.
5. Included in the holiday package are a number of items listed in the Claimants' Club Freestyle brochure including the return flights (e.g. on the Claimants in-house airline Britannia); coach transfers to and from the resort airport; accommodation at the chosen hotel or apartment; meals and the services of a Club Freestyle rep."
"7. In May 2000 the Defendants first launched "Freestyle Cruising" on their cruiser the Norwegian Sky since when the Freestyle Cruising concept has been adopted by the whole fleet with the exception of S/S Norway. In their 2001/2002 brochure Freestyle Cruising is depicted on the front and back covers in wave logo form as part of the title "NCL Norwegian Cruise Line, Freestyle Cruising". In addition the word FREESTYLE is depicted on the front cover in freehand with the words World-wide Cruising in large capitals underneath and on the back cover Freestyle is coupled with various on board activities, namely Dining, Service, Attire, Activities, Gratuities, Disembarkation all part of the world of Freestyle Cruising. (see Exhibit X1). As an integral part of a number of the Freestyle Cruising holiday cruises (e.g. Cruise and Stay; Cruise and Tour) the Defendants arrange tours or excursions which may or may not involve arranging hotel accommodation as part of the tour (see e.g. Exhibit X2).
19. I have no doubt that the Defendants' use of the word "Freestyle" whether used on its own or when combined as "Freestyle Cruising" or indeed as "NCL Freestyle Cruising" is a use of the sign "Freestyle" which of course is identical to the registered FREESTYLE marks.
"
"Although I have found that the use by, or permitted by, of Premier of the TYPHOO mark in relation to the Goods constitutes trade mark use, that is not the end of the matter in relation to the defensive marks. It will be recalled that the Goods are tea caddies, tea pots, mugs, tea towels, milk jugs, sugar bowls, biscuit barrels, cups, mug trees, aprons, storage jars, memo boards, tea cosies, trivets, tea pot stands, trays, cafetieres and drinking glasses. It will also be recalled that the '270 Mark is registered in respect of "hand tools and hand implements, all for domestic use; and cutlery, forks and spoons", and that the '276 Mark is registered in respect of "domestic utensils and containers ..., combs, brushes ... sponges and instruments ... and materials for cleaning; and glassware, porcelain and earthenware ...".
Mr Arnold raised the question as to how section 46(5) is to be applied once one concludes, as I have done in relation to the '276 Mark, that it has been used in respect of some of the items for which it is registered, but not in respect of others. It appears to me that one simply looks at the list of items on the register and asks oneself, in relation to each such item, whether or not the mark has been used "in relation to" or "in connection with" that item during the past five years. If the answer is in the affirmative, then the mark can remain registered in respect of that item; if the answer is in the negative then, subject to any question of discretion, the registration is revoked in respect of that item. One does not dig deeper and, as it were, narrow a particular category of item to reflect the extent of the goods to which the mark has been used. Thus, if the only "domestic ... container" in connection with which the mark had been used was a red tea caddy, it seems to me that the registration should remain in respect of domestic containers: it should not be cut down to, for instance, containers for food, containers for tea, tea caddies, or red tea caddies. First, as a matter of principle, it appears to me that one should take the registration as one finds it. Secondly, as a matter of practice, if the law were otherwise it would lead to uncertainty (as indicated by the example I have just given) and a potential welter of applications for partial revocation. I note that the approach which I favour appears to have been adopted in the Trade Marks Registry in Zippo Trade Mark [1999] R.P.C. 173."
"Neuberger J.'s attention was not drawn to the decision of Laddie J. in Mercury Communications Ltd v. Mercury Interactive (UK) Ltd [1995] F.S.R. 850. Laddie J. was concerned with a very wide specification of goods: "computer programs". In rejecting an application for summary judgment, he took the view that that wide specification could be cut down by a non use attack. In other words, that "computer programs" could be limited to computer programs of a particular part.
I have no doubt that what Laddie J. assumed was right and in this respect I differ from Neuberger J. The problem is that some of the language for specifications of goods is apt to be extremely wide. Indeed, "printed matter" in this case is extremely wide. I think it is inevitable that at times one would have to "dig deeper". Even taking the specification considered by Neuberger J for a "domestic container", one can think of quite different sorts of domestic container: a hat box, a snuff box, a jewellery box, a plastic thing you put inside the fridge. Wide words can cover what are commercially quite different sorts of articles. So if one were to show use for just one of that sort, it would be commercially nonsense to maintain the registration for all goods caused by the wide words.
That is not to say the court will cut the registration right down to things like red tea caddies. But if non use in respect of a significant subset of a wide general description is established, then I see no reason why the court should not eliminate that subset from the registration. Thus here I think that, although use in relation to printed stationery is established, stationery is a quite different sort of material from literary publications of the kind put out by Reed and the specification can be cut down."
"In the Minerva case, Jacob J. did not accept this view of the section. The difficulty with Neuberger J.'s formulation is that while apt to deal with the case before him, it did not deal in terms with huge classes of goods described by single phrases like "computer software" or "cleaning substances and preparations". I must therefore differ with respect from Neuberger J. and agree with what Jacob J. said in MINERVA Trade Mark. At times, it is inevitable that one is obliged to dig deeper.
22. The problem which is raised in an acute form in this case is how much deeper it is right to dig. It is not possible to draw a list of goods in respect of which the mark has not been used, and it seems to me that the question is the more general one: how should the specification of goods be narrowed to reflect the non-use? In answering this question, my starting point is that the action for infringement of a registered trade mark is an action in which (in its simplest form) the claimant is relieved from the obligation of showing the court how in fact he uses the mark. It can be viewed in purely domestic terms as an action for passing off in which it is not necessary to give evidence as to reputation. In my judgment, it would only be right as a matter of principle to divest the registered proprietor of a part of his statutory monopoly if one is satisfied that he ought to have to demonstrate confusion in fact, or at least be obliged to rely on section 10(2). The assessment need not of course be made without reference to the activities of the defendants. The fact of non-use has in itself nothing to do with the defendant, and the defendant's activities, or lack of them, are prima facie irrelevant unless, I suppose, it can be shown that the defendant has himself created a reputation in respect of a class of goods for which the claimant has not used the mark. It follows it seems to me that the second form of revocation sought by the defendants in the present case is not acceptable, leaving as it does a class of goods defined negatively by reference to the defendants' activities.
23. In my judgment, the task is best performed by asking what would be a fair specification of goods having regard to the use that the proprietor has in fact made of the mark and assuming further that he will continue that use. Mr Campbell submitted that the specification of goods should in effect be drafted from scratch to encompass only the use which the registered proprietor has made of the mark. I accept that the starting point should be a limitation to the actual field of use. The difficulty lies in deciding on the width of the surviving specification, the correct formulation of which must depend largely upon questions of fact and degree. Let me take an example to which Neuberger J. refers in Typhoon. There, the registration was (inter alia) for "domestic containers". Suppose the proprietor uses the mark only on red tea caddies. How does one limit the registration? Obviously the use of the colour red is irrelevant, since it does not define a species of goods. But should the registration be limited to tea caddies? Neuberger J. thought not, since, as he put it, one should take the registration as one finds it, and it is not possible to distinguish between containers for food, containers for tea, and tea caddies. He added that he considered that to permit this kind of detailed approach to a registration leads to uncertainty and invites litigation. So he considered that the registration should remain in respect of domestic containers. I would agree wholeheartedly with this statement of the problem, but the answer must, I believe, depend upon the facts of the case.
24. I think that the correct starting point as a matter of principle consists of the list of articles for which the proprietor has in fact used the mark. In arriving at a fair specification having regard to the proprietor's use, it is also necessary to remember that the effect of section 10(2) (and of 10(3), in limited circumstances) is to give the proprietor protection outside his specification of goods but in areas where he can demonstrate a likelihood of deception in the wide sense, that is, deception as to trade origin leading to association among the relevant public. There is no pressing need, therefore, to confer on the proprietor of a wider protection than his use warrants by unduly broadening the specification of goods. There is a balance to be held between the proprietor, other traders and the public having regard to the use which has in fact taken place.
25. Here, the proprietor's cleaners are cleaners for technical/industrial use and on the face of it the specification should be limited to reflect this fact. The main channels of trade are those which I have described. The persons who will encounter the goods in the course of trade or business are the purchasers and the users of such cleaning materials. They would not, it seems to me, be confused by the use of the mark "Decon" on washing up liquid or dish washer powder purchased in a supermarket. It should be remembered that many people other than chemical laboratories in the narrow sense will have access to Fred Baker's catalogue and other similar publications. This catalogue is no doubt essentially a catalogue for products for using in chemical laboratories but covers materials to be used for tissue culture, dissection, and there is even some clean room clothing. How is the class of goods to be fairly described? My immediate reaction was to say that all these cleaning materials are intended for use in a laboratory. That is where the mark started to be used; it is the area in which the mark has always been used; and it is the only relevant area of business in which the proprietor trades. My first view was that the specification should be limited by including words such as "all for laboratory use" but Mr Moody-Stewart satisfied me that this is too narrow and does not reflect the use actually made of the mark, which on the unchallenged evidence includes industrial use. He suggested, and I accept, that the area of use established on the evidence was non-domestic use. It is not possible sensibly to formulate a narrower specification, and it would not be fair to the proprietor to attempt to do so.
26. The defendants' first proposed specification of goods is open to the objection that the words "general purpose" are ambiguous and might be said to cover such products as detergents purchased in supermarkets for domestic use. It is the nature of the use which I consider to be crucial in the present case. Accordingly, I shall revoke the registrations in suit except to the extent to which they relate to the products set out in the present specifications of goods but qualified by the words "all for non-domestic use"."
The judge went on to hold that despite the partial revocation there was infringement.
"13. I consider that cruises in the sense of cruise ship holidays and the ancillary services directly involved with such cruises form a distinct category of holiday product which differs both in kind and customer profile to land based package holiday products such as the Claimants' Club Freestyle package holiday."
"s 10 Infringement of registered trade mark. (1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. (2) A person infringes a registered trade mark if he uses in the course of trade a sign where because
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(4) For the purposes of this section a person uses a sign if, in particular, he
(a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) imports or exports goods under the sign; or (d) uses the sign on business papers or in advertising.
"
"May account be taken, when assessing the similarity of the goods or services covered by the two marks, of the distinctive character, in particular the reputation, of the mark with earlier priority (on the date which determines the seniority of the later mark), so that, in particular, likelihood of confusion within the meaning of Article 4(1)(b) of Directive 89/104/EEC must be taken to exist even if the public attributes the goods and/or services to different places of origin ("Herkunftsstatten")?"
"12. In the first part of the question, the Bundesgerichtshof asks in substance whether, on a proper construction of Article 4(1)(b) of the Directive, the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to the likelihood of confusion.
15. It is to be noted, first, that the tenth recital of the preamble to the Directive states that "the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services; . . . the protection applies also in case of similarity between the mark and the sign and the goods or services; . . . it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion; . . . the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, [on] the association which can be made with the used or registered sign, [and on] the degree of similarity between the trade mark and the sign and between the goods or services identified, constitutes the specific condition for such protection"."
"25. In the second part of the question the Bundesgerichtshof asks in substance whether there can be a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive where the public perception is that the goods or services have different places of origin ("Herkunftsstatten").
26. There is a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive where the public can be mistaken as to the origin of the goods or services in question.
27. Indeed, Article 2 of the Directive provides that a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings, while the tenth recital in the preamble to the Directive states that the function of the protection conferred by the mark is primarily to guarantee the indication of origin.
28. Moreover, according to the settled case-law of the Court, the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality (see, in particular, Case C-10/89 HAG GF (HAG II) [1990] ECR I-3711, paragraphs 14 and 13.
29. Accordingly, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive (see SABEL, paragraphs 16 to 18). Consequently, as the Advocate General states at point 30 of his Opinion, in order to demonstrate that there is no likelihood of confusion, it is not sufficient to show simply that there is no likelihood of the public being confused as to the place of production of the goods or services."
"12. Accordingly, by its questions, which it is appropriate to examine together, the national court is seeking clarification from the Court on the following matters:
- the criteria to be applied in assessing the likelihood of confusion within the meaning of Article 5(1)(b)of the Directive;
- the significance to be attached to the wording of the Directive, according to which the likelihood of confusion includes the "likelihood of association" with the earlier mark; and
- the effect to be ascribed, in assessing the likelihood of confusion, to the fact that the mark is highly distinctive."
"17. According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 5(1)(b) of the Directive (see, to that effect, SABEL, paragraphs 16 to 18, and Case C-39/97 Canon [1998] ECR I-5507, paragraph 29). It follows from the very wording of Article 5 (1)(b) that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope (see, to that effect, SABEL, paragraphs 18 and 19). 18. According to the same case law, likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see, to that effect, SABEL, paragraph 22). 19. That global assessment implies some interdependence between the relevant factors, and in particular a similarly between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence of these factors is expressly mentioned in the tenth recital in the preamble to the Directive, which states that it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see Canon, paragraph 17). 20. Furthermore, the most distinctive the earlier mark, the greater will be the likelihood of confusion (SABEL, paragraph 24), and therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see Canon, paragraph 18). 21. It follows that, for the purposes of Article 5(1)(b) of the Directive, there may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive (see, to that effect, Canon, paragraph 19). 22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of May 4, 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v. Huber and Attenberger [1999] E.C.R. I-0000, paragraph 49). 23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51). 24. It follows that it is not possible to state in general terms, for example by referring to give[n] percentages relating the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character (see, to that effect, Windsurfing Chiemsee, paragraph 52). 25. In addition, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 5(1)(b) of the Directive--". . . there exists a likelihood of confusion on the part of the public . . ."--shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, to that effect, SABEL, paragraph 23). 26. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (see, to that effect, Case C-210/96 Gut Springenheide and Tusky [1968] E.C.R. 1-4657, paragraph 31). However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question. 27. In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed."
"Therefore the question is, assuming a fair and normal use of the registered trade marks FREESTYLE for travel, tours and/or holiday products other than cruises, would the average member of the public interested in a cruise holiday product branded as FREESTYLE CRUISING believe the product was either a product of the Claimants or a product associated with the providers of FREESTYLE land based holiday and travel products."
"33. Such evidence whilst relevant to whether the booking and arranging of cruise holidays relates to services which are similar to the booking and arranging of land holidays, does not assist in resolving whether the Defendants' use of the sign "Freestyle Cruising" is likely to be confused with the Claimants' marks as used in relation to land based holidays services.
35. In my opinion for the reasons given above, the mark Freestyle is neither inherently sufficiently distinctive nor has it acquired such distinctiveness in the market place and given the message that the use of the sign Freestyle Cruising is likely to convey to the average consumer and also given the widespread adoption of the sign Freestyle in relation to other trading activities, I do not consider that the use of the sign Freestyle Cruising for booking and arranging cruises in the manner used by the Defendants is likely to cause confusion with the Claimants' marks when fairly used in respect of land based holiday activities or services. In the result the Claimants' action fails. I shall hear Counsel on the relief sought."
Lord Justice Waller:
Lord Justice Scott Baker: