Neutral Citation Number: [2011] EWPCC 30
Case No: 0CL 70084
IN THE PATENTS COUNTY COURT

The Rolls Building,
7 Rolls Buildings
London EC4A 1NL

Date: 01/11/2011

Before :

HIS HONOUR JUDGE BIRSS QC
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Between :

	FOX INTERNATIONAL GROUP LIMITED	Claimant	
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	JAY FOLLY	Defendant	

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Hugo Cuddigan (instructed by Dickinson Dees LLP) for the Claimant
The Defendant represented himself

Hearing date: 17th October 2011
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Judgment

His Honour Judge Birss QC : 

1.	This is an action for trade mark infringement and passing off.  The claimant (Fox) contends that the defendant (Mr Folly) has infringed its trade mark STALKER and passed off his goods as and for the claimant’s goods.  
2.	Mr Cuddigan appears for Fox instructed by Dickinson Dees LLP.  Mr Folly represents himself.   
3.	Fox is a company which makes and supplies angling equipment.   It has been trading since 1969.   One of the marks the claimant uses is “STALKER”.  This mark has been used since 2001.   The claimant has a Community Trade Mark No. 587,808 (STALKER) registered as of 12 June 1997 for the following goods: 
i)	Luggage; backpacks; rucksacks; luggage for retaining angling equipment; all goods in Class 18;
ii)	Clothing; clothing for anglers; suits, one-piece suits, salopettes, jackets and trousers; all being waterproof; all goods in Class 25; and
iii)	Angling apparatus; all goods in Class 28.
4.	The claimant also claims a substantial goodwill and reputation in the mark STALKER.   By the end of 2010 the claimant had sold about £5.2M worth of goods under the mark and spent about £156,000 on promoting goods under the mark.  
5.	The way the claimant sells its goods and uses its trade marks is as follows.   The claimant’s house mark is FOX.  So for example the claimant’s catalogue carries the mark FOX on the outer cover.  Inside the catalogue the various goods are marked in a variety of ways.  For example: 
i)	a page devoted to sleeping bags shows a “evo4 zzz sleeping bag”, a “zzz carp pillow”, and a “stalker zzz sleeping bag” (p99 of the 2005 catalogue in evidence),
ii)	a page devoted to chairs shows an “Excell II Chair”, “Folding Guest Chair”, “Adjusta-Level Chair” and “Stalker ® Low-Level Chair” (p48 of the 2005 Catalogue in evidence),
iii)	a page devoted to pods, which are essentially racks on which fishing rods may be rested, shows an “A-Pod”, a “Stalker” pod and a “Horizon” pod along with cases for each.   Text concerning the cases states:
“Evolution ® Pod Cases
Three cases design to safely store Fox Stalker, Horizon and A-Pod assemblies complete with buzz bars fitted with bite alarms.”  
(p64 of the 2005 Catalogue in evidence)
iv)	a page concerned with forms of tent or bivvy which include “Xtreme Bivvy”, “Evolution Bivvy Plus X”, “Stalker ® 2 Man Dome”, “Stalker Bivvy” and “Stalker Shelter”.  A previous page refers to:
“Stalker ® Domes 
Stalker shelters offer Fox engineered products at highly competitive process. The principle of the Stalker Bivvy and Shelter is similar to the Evolution system, making the shelters light, stable and highly flexible.” 
(p39 and p43 of 2005 catalogue)
6.	The 2005 catalogue also includes luggage called “Stalker ® luggage” (catalogue p94 and see rucksacks at p96), fishing rod holdalls called “Stalker Rod Holdalls” (catalogue p95), “Stalker” boilie bags (p99) [a boilie is a form of boiled bait] and “Stalker ®” digital scales (catalogue p159).  My attention was also drawn to Stalker and Stalker X fishing rods in the 2009 catalogue (p428 of trial bundle B). 
7.	In keeping with the fact that the claimant’s house mark is FOX, sometimes the STALKER goods are marked with a composite mark “Fox Stalker” (e.g. the boilie bags), however sometimes they are simply marked STALKER (e.g. the digital scales).  Fox will put the mark FOX on the scales somewhere but as depicted in the catalogue the visible part of the product simply bears the mark STALKER.  
8.	Mr Folly sells angling equipment on the internet.   He sells his products via the eBay website.  Mr Folly has created a device mark as shown below:

9.	Mr Folly has been trading using this mark since December 2009.  Sometimes the device appears as above with the word “tackle” (always with a capital “T”) beside Stalker, and sometimes it appears without the word tackle.  It will be seen that the “t” of Stalker has been replaced by an image of an angler holding a rod. 
10.	Mr Folly has two websites: stalkertackle.co.uk and stalkerclothing.co.uk.  The images on both sites are the same. They show the device as above but absent the word Tackle, above the following text: 
“Welcome to the Stalker website
We will be adding to our range of clothing, accessories, terminal tackle and luggage over the next few weeks.
Items are currently available from 
Mainly Tackle, Arlesey
The Bait King. eBay
For trade stocking enquiries, please email us”
11.	The sites have a list of items of clothing down the left side (“T-shirts, Polo Shirts …” etc.) and on the right side there is a larger image of the angler in the device mark above. 
12.	On eBay Mr Folly runs an outlet called “The Bait King”.  When Fox’s solicitors examined the site they found 50 items returned on a search under the word “stalker”.   These included a “Stalker Fishing Deluxe Cutlery Set”, “Stalker Classic Olive Landing Net handle Float”, “Stalker Tungsten Rig Putty large 20gr handy pack”, “Stalker 60″ brolly”, “Stalker Fishing Deluxe Carryall / Holdall / Bag” and numerous other items.   
13.	Fox’s solicitors bought four items from the site: a carry all bag, a polo shirt and two packs of smaller items.  The smaller items were safety clips and boilie ends.  They are all marked using Mr Folly’s device however in each case the device was not as shown above.  The word Tackle was absent.  
14.	Fox’s case is that Mr Folly is infringing the Community trade mark and passing off.  Fox relies on Art 9(1) (a) and 9(1)(b) of the CTM Regulation 207/2009.  They provide as follows:
Rights conferred by a Community trade mark

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)	any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;

(b)	any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of 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;
15.	Mr Cuddigan submitted that this was a Art 9(1)(a) case or alternatively, if Mr Folly’s sign(s) could not be said to be identical to Fox’s mark then it was a 9(1)(b) case with a very high degree of similarity.   I will need to consider (briefly) the law on both Art 9(1)(a) and 9(1)(b).
Article 9(1)(a)
16.	To establish infringement under Art 9(1)(a) six conditions must be satisfied, (i) there must be use of a sign by a third party, (ii) the use must be in the course of trade, (iii) the use must be without the consent of the proprietor, (iv) the use must be of a sign which is identical to the trade mark, (v) the use must be in relation to goods or services which are identical to those for which the mark is registered, and (vi) the use must affect or be liable to affect one of the functions of the trade mark.  
17.	This is not the occasion on which to examine any questions arising in relation to the sixth condition following the Google France decision (Cases C-236/08 to C-238/08).  I will approach this case on the basis that condition (vi) is satisfied if the use complained of would be regarded by customers as trade mark use, i.e. as an indication of the trade origin of the goods in question (see Anheuser-Busch v Budejovicky Budvar Case C-245/02 at paragraphs 59-64.  
18.	In this case the major points are whether Mr Folly uses a sign identical with the trade mark and the question of whether Mr Folly uses the signs complained of as an indication of origin or instead in a purely descriptive sense.
19.	The correct test for identity of marks was referred to and explained by the Court of Justice in Case C-291/00 Societe LTJ Diffusion v Sadas Vertbaudet [2003] FSR 608.  At para 54 the Court said: 
the answer to the question referred must be that Art 5(1)(a) of the Directive must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.
20.	As regards identity of marks, Mr Cuddigan relied on Hormel v Antilles [2005] ETMR 54 in which Mr Richard Arnold QC (as he then was) held that the sign “spambuster” written in a coloured cartoon font was identical in the relevant sense to the word mark “spambuster”. He held that the sign contained nothing additional to the word “spambuster”, it merely represented the word in one particular manner.  
21.	As regards descriptive use, it is clear that purely descriptive use is not use in relation to goods for the purposes of Art 9(1)(a).  For that Mr Cuddigan cited Michael Hölterhoff v Ulrich Freisleben C-2/00 [2002] ETMR 79.
Article 9(1)(b) 
22.	In Och-Ziff Management Europe Ltd v. OCH Capital LLP [2010] EWHC 2599 (Ch) at paragraphs 72 – 74, Arnold J. cited with approval the summary of the case law of the CJEU used by the UK Trade Marks Registry for the purpose of considering likelihood of confusion.  Although these are in the context of registration against relative rights grounds, the principles listed all apply to infringement.  They are: 
“(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 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 distinct 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 relevant public by a composite trade mark may, in certain circumstances, be dominated by one 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 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 marks may be offset by a greater degree of similarity between the goods, and vice versa; 
(h)	there is a greater likelihood of confusion where the earlier trade 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.”
23.	In Och-Ziff, Arnold J also pointed out that, in the infringement context, likelihood of confusion is to be determined by reference to the use which has actually been made of the sign in context (as opposed to the consideration of notional fair use in the registration context).  
Mr Folly’s defences
24.	Mr Folly’s defences are these: 
i)	The marks are not similar.  Mr Folly contends that his mark is “Stalker Tackle” (and the device) whereas Fox use “Fox Stalker”;
ii)	The word STALKER is generic and therefore the Community Trade Mark is invalid under Art 51(1)(b) of the Regulation. 
iii)	His use of STALKER  is descriptive use and as such is not infringing.   
25.	Mr Folly’s first point is a question of fact which I will address having regard to the evidence before me.   It involves considering both how the claimant uses the marks and how the defendant trades.  An important point is that the claimant’s registered mark is of course simply STALKER.  
26.	As to Mr Folly’s second point, Art 51(1)(b) and 51(2) provide: 
“(1) The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
...
(b) if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered.
…
(2) Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.”
27.	Mr Folly sought to provide evidence of numerous other traders in angling equipment and clothing who were using the sign STALKER.  He contended that that evidence showed that Fox’s mark had become “generic” and thereby invalid.   It will be necessary to deal with this issue as a question of fact.  One point arising however is that Fox contend that much of the evidence relied on by Mr Folly relates to use not as an indication of origin but as a description of the product.  Mr Cuddigan submitted that if the use in question was purely descriptive use and therefore not use to which his client could properly object, it was irrelevant for the purposes of Art 51(1)(b).   
28.	On this issue Mr Cuddigan cited Björnekulla Fruktindustrier AB v Procordia Food AB, Case C-371/02, [2005] 3 C.M.L.R. 16, in which Advocate General Léger described Article 12(2)(a) of the Trade Marks Directive (equivalent to Art. 51(1)(b) of the Regulation) as applying in the situation “where a sign has, through the use which has been made of it, lost the distinctive character which it originally had at the time when it was registered” [para 49].  Such a mark would be revoked following circumstances:

“where the use of a trade mark has become so widespread that the sign which constitutes the trade mark in question has come to designate the kind, the type or the nature of the goods or services covered by the registration rather than the specific goods or services originating from a particular undertaking. That is the case, for example, of the terms “thermos” for an insulated flask, “walkman” for a portable stereo, “cellophane” for a transparent film manufactured from cellulose hydrate and used for packaging, and “aspirin” for a medicine which relieves pain and reduces body temperature and which is made from acetylsalicylic acid.” [para 50]

29.	Mr Cuddigan also cited the judgment of the CJEU in Levi Strauss v Casucci SpA, Case C-145/05, [2006] ETMR 71.  There the Court stated as follows:

“29 Those provisions indicate that the purpose of Directive 89/104 is generally to strike a balance between the interest of the proprietor of a trade mark to safeguard its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their products and services (see, in relation to the requirement of availability of colours in the case of registration as a trade mark of a colour per se, Case C-104/01 Libertel [2003] E.C.R. I-3793). 

30 It follows that the protection of rights that the proprietor of a trade mark derives under the directive in question is not unconditional, since in order to maintain the balance between those interests that protection is limited in particular to those cases in which the proprietor shows himself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe his mark.”
30.	Thus since descriptive use of a sign cannot infringe a trade mark (Hölterhoff above), Mr Cuddigan submitted that Art 51(1)(b) did not impose a burden on a proprietor to take proceedings he is bound to lose, where a third party uses the mark descriptively.  So Mr Cuddigan submitted that an absence of proceedings by Fox in cases in which the use of the sign is not an indication of origin but is used as a description, cannot constitute relevant “inactivity” for the purpose of Art 51(1)(b).   In my judgment Mr Cuddigan is right as a matter of principle.   The inactivity referred to in Art 51(1)(b) must refer to a lack of action which would, if taken at the appropriate time, have been capable of preventing the use in question.  However the existence of such descriptive use will demonstrate that the word can be used in that way without infringing Fox’s rights and serves to emphasise the importance of the question of whether the acts complained of in this case are use of the signs by Mr Folly as indications of origin.
31.	Finally, Mr Folly’s third point was that his own use of STALKER was itself descriptive of the goods in question and therefore not infringing.  If Mr Folly is right as a matter of fact then his use would indeed not be infringing either for the reasons already given in relation to Art 9(1)(a) or pursuant to Art 12(b) of the Regulation in any event. 
The trial
32.	Since the case was commenced before the new procedural rules in the Patents County Court came into force, they did not apply to it.  Nevertheless the trial was conducted expeditiously and was completed in a morning.  
33.	Fox’s case was supported by the evidence of Mr Reeves, the claimant’s managing director.  He submitted two witness statements and was cross-examined by Mr Folly.   Mr Reeves gave his evidence entirely fairly. 
34.	Mr Folly was cross-examined by Mr Cuddigan.  He gave his evidence entirely fairly too.  
35.	Mr Folly has represented himself throughout these proceedings.  At the CMC I suggested to him that he take specialist legal advice but I understand he did not do so because it was too expensive.  The case Mr Folly wished to present was fairly clear as a result of the documents he filed save for one point.   At the close of the proceedings and in reply to Mr Cuddigan’s reply speech, Mr Folly raised for the first time at trial a contention that Fox had not used the mark in question on certain goods (clothing).  This was a new point.  It emerged that Mr Folly had mentioned it in writing in a document called his Reply to the witness statement of Mr Paul Reeves.  That Reply was served about three weeks before trial on 26th September 2011.  Fox had not sought to answer the point in evidence at that late stage.  As far as they were concerned the point was not properly part of the proceedings.   Mr Folly pressed the point.  In my judgment the point is not open to Mr Folly in these circumstances.   If one took a strict view of the documents filed by Mr Folly in these proceedings, a number of aspects of his case were not as clearly dealt with and explained as one would expect of a party with legal representatives.  However Mr Folly is a litigant in person and such an approach would simply have prolonged the proceedings and increased the costs to no purpose.   However the fact that the case has been run on a fairly relaxed basis, when it has been reasonably clear what Mr Folly’s defences have been, does not entitle a party to raise a new point of this kind in this way.  There is no trace of this argument in the current (unamended) Defence and Counterclaim.  This is the kind of point which, if Mr Folly had wished to raise it, should have been the subject of an application to amend the Defence and Counterclaim.  If it had gone in then Fox would have had a chance to deal with it in evidence.  Allowing Mr Folly to raise the point now would prejudice Fox since it has no evidence on the point.  Mr Folly submitted that there was no evidence they had used the mark and therefore his point was a good one.  That is not correct.  There is no evidence because Fox have not sought to address the issue in evidence.  Whether they in fact have evidence of use or not I do not know.  To permit Mr Folly to raise this point now would prejudice Fox since they have not had a chance to deal with it in evidence.  I will not permit Mr Folly to raise this non-use point. 
The Facts
36.	There are two factual matters which need to be addressed first, the question of the descriptive use of the word STALKER and the question of what signs Mr Folly is in fact using. 
Stalker and the mobile angler
37.	To support his argument that the CTM in invalid, Mr Folly produced evidence in the form of printouts from the internet showing other traders in angling products who used the term STALKER.   He produced 44 instances of traders offering angling equipment of one sort of another by reference to STALKER.  Mr Folly submitted that this showed that the term had become generic in the trade.
38.	Mr Reeves took each of Mr Folly’s examples in turn and commented on them.   On a number of occasions Mr Reeves challenged whether the instance did indeed demonstrate Mr Folly’s assertion.  In a number of cases the product could not be identified, in some cases Mr Reeves’ stated that the product was in fact a Fox product, in one case (JRC) Fox had extracted an undertaking not to use the mark from the trader in question and in another (Greys) the use is licensed.   However the major point taken by Mr Reeves was that in the majority of instances relied on the word was not being used as an indication of origin but as a description of the goods in question. 
39.	A good illustration of Mr Reeves’ point is the example of “AI” or “Angling Intelligence” relied on by Mr Folly.  This relates to a bag called “STALKER BAG” which appears to be a product of “AI Luggage” sold on a website operated by a trader called Garry Evans.   The text beside the bag refers to the bag as “bursting with features for the mobile angler, whether it be stalking carp or roving for barbell” and states that the bag “can be carried on the back out of the way, something essential for true stalking.”  Thus Mr Reeves’ evidence was that this use of STALKER here was descriptive in nature and not as a badge of trade origin.
40.	Mr Folly did not challenge Mr Reeves’ evidence in this regard.   It shows that STALKER is capable of being used in a descriptive sense in relation to angling.  
41.	The point Mr Folly did take in cross-examination with Mr Reeves was as follows.  Mr Reeves’ had expressed the opinion that Mr Folly’s own use of STALKER was not descriptive.  Mr Folly understood that Mr Reeves’ evidence to be an assertion that none of Mr Folly’s 50 goods on the eBay site marked with “Stalker” could be used by an angler who was stalking fish.   Mr Folly put to Mr Reeves that a stalking angler could use any of those goods.  However that was not the point of Mr Reeves’ evidence.  Mr Reeves’ position was that although obviously an angler could choose to use any equipment he wanted while he might be stalking fish, Mr Folly’s goods were not specific for the mobile or stalking angler.  They were not goods aimed specifically at such a stalking angler and so, Mr Reeves contended, the term was not being used as a description of the goods themselves.
42.	In the end in my judgment the position on the evidence was more or less common ground.  In the field of angling there is a particular kind of angling which fisherman call stalking.  In the terminology used by Angling Intelligence (AI) a stalker could be called a mobile angler.   While an angler could choose to use anything he wanted while stalking carp beside a lake, general angling equipment is not aimed specifically at the mobile angler.  There are some specific goods aimed at those undertaking this activity and in that context STALKER may be used in a descriptive sense to refer to the use to which the products can be put.   Mr Folly suggested that fishermen would sometimes sit still while they were stalking and do so for considerable lengths of time.  I do not doubt what Mr Folly says but the fact remains that on the evidence before me, what characterises stalking in the context of angling is mobility.  It is goods with that purpose in mind which might properly be described using the term STALKER.
43.	This case relates to a market in which the word in question is capable of being used in a descriptive sense in some contexts but is also capable of being used as a badge of origin.  For any given instance of use, the context and circumstances in which the word is used will be crucial in order to determine the sense in which the term is being used.  
What signs does Mr Folly actually use?
44.	Mr Folly uses a number of signs as part of his trading.   He asserts that he uses a device in the form shown above and I will consider it although when Fox’s solicitors bought goods from Mr Folly, they were marked with the form of the device absent TACKLE.  I will consider that too.
45.	On the internet Mr Folly also uses “Stalker” as a word without the device (see the descriptions which appear on eBay mentioned above).  Mr Folly was at pains to contend that he does not really use “Stalker” alone but uses “Stalker Tackle” or “Stalker Clothing”.  While it is true that those composite phrases do appear sometimes, the suggestion that “Stalker” is not used as a word alone by Mr Folly is wrong.  For example on his eBay site called “The Bait King”, when searching using “stalker”, 50 items are returned, all of which appear as “Stalker …” such as “Stalker Fishing Deluxe Cutlery Set” or “Stalker Tungsten Rig Putty” etc.   Although in the first example the second word “fishing” might be taken to be part of a composite “Stalker Fishing” it is clear that the others simply use “Stalker” alone followed by a description of the goods.  (I will consider whether “stalker” is actually being used descriptively below.)   Mr Folly asserted that this form of text as it appeared on a search was not a fair reflection of what the customer would encounter and one needed to consider the specific eBay page relating to the specific goods.  He said that on those pages he used “Stalker Tackle” or “Stalker Clothing” rather than “Stalker” and handed in some printouts from eBay to prove it. 
46.	Mr Folly’s eBay printouts do not establish the point he seeks to make.   On the more detailed eBay pages for a given product the customer will see as a heading the same description as appears on the search.  So for example in one print out I was given the search returns “Stalker Back Lead Clips ***Ultimate Terminal Tackle***”  and the same text appears on the detailed eBay page running across the header as the page is printed out and as the title on the page itself.  There is then an image of the pack, which is a plastic bag with a cardboard top part carrying Mr Folly’s device in its form without the word “tackle”. Lower down the page there is a glossy picture which does have a heading using the term “Stalker Tackle” but then repeats the image of the pack which bears the device with “stalker” but without “tackle”.  
47.	In my judgment, while it is true that Mr Folly sometimes uses the sign “Stalker Tackle” or “Stalker Clothing”, he also uses a sign consisting of the word “Stalker” alone. 
Infringement under Art 9(1)(a)
48.	One of Mr Folly’s points is that Fox use FOX STALKER rather than just STALKER.  I should say that I do not accept that since it is clear the word STALKER is used separately from the word FOX albeit always in a context in which the goods originate from FOX.   However in any event this point is irrelevant to the question of infringement under Art 9(1)(a) because the registered mark is STALKER alone.
49.	I have decided that Mr Folly is using STALKER alone.  That is plainly identical to Fox’s trade mark.   However I also need to decide whether Mr Folly’s use of the device is use of an identical sign.  I will consider first Mr Folly’s device without the extra word “tackle”. 
50.	In terms of words, the device used by Mr Folly consists entirely of STALKER.  An average consumer who saw the device would call it STALKER.  Thus orally (or aurally) it is identical to Fox’s Community trade mark.   However visually the device is more than the word.  It includes a striking image of an angler with a rod.  The device does not merely represent STALKER in a particular manner (compare the Spambuster case), it conveys a further image to the average consumer in addition to the word itself.   In my judgment Mr Folly’s device is not identical to Fox’s trade mark.  
51.	Accordingly the only sign I need to consider under Art 9(1)(a) is the word STALKER itself. 
52.	So the first four conditions for infringement under Art 9(1)(a) are satisfied and the issue is the fifth and sixth conditions.   Is Mr Folly using the word as an indication of origin or is he using it in a purely descriptive sense? 
53.	In my judgment it is clear Mr Folly uses the word as an indication of origin.  First on his websites stalkertackle.co.uk and stalkerclothing.co.uk the text states “Welcome to the Stalker website” and then goes on to say “We will be adding our range ...”.  The word “We” clearly refers back to “Stalker” and shows that, to someone viewing the site, Stalker refers to the entity from which the goods originate.   As a separate matter it also seems to me that on the eBay pages, the juxtaposition of the device mark – which includes the word “Stalker” – with the word used on its own shows to an average customer that the word is being used as a trade mark, an indication of origin.   Even though the term is capable of being used as a description for some angling goods and even for some angling goods Mr Folly is selling (I think it was accepted by Fox that Mr Folly’s “Stalker Monster Crab Chum Floaters” would be used by stalking anglers), the way in which Mr Folly in fact uses the word is as an indication of the trade origin of his goods.   No-one looking at Mr Folly’s eBay pages would understand that he was using it in a descriptive sense.  Accordingly he is infringing the trade mark under Article 9(1)(a) of the Regulation and is not entitled to a defence under Article 12.
Infringement under 9(1)(b) 
54.	The question in relation to Art 9(1)(b) is whether Mr Folly’s signs are such as to give rise to a likelihood of confusion within the meaning of the Regulation.  The key issue concerns Mr Folly’ use of his device in its form without the word Tackle since that is the predominant way in which he uses it. 
55.	The average consumer in this case will be a person buying angling equipment, no doubt often an angler himself or herself.  Mr Reeves gave evidence which bears on the reputation enjoyed by Fox’s STALKER mark in the market.  As at the date Mr Folly started using the signs complained of, Fox’s sales of STALKER goods were of the order of £5 Million.  The single most popular product bearing the mark is the STALKER pod which was launched in 2004 and generated £200,000 sales in 10 months.  It seems to me that this is a significant level of sales in a market like this one (for angling equipment).  Apparently by 2010 sales of the STALKER pod had dropped to 1/3 of their former level but Mr Reeves explained this was due to the relatively limited life cycle of products of this kind.  Fox intend to launch a new STALKER Plus model in Autumn 2011.  Mr Reeves also gave evidence of the promotional activities undertaken by Fox.  Particularly relevant is the Fox brochure which is about 200 pages long and has a print run of 250,000 per year in five languages.  I find that STALKER is a mark with a reputation in the UK amongst buyers of angling equipment.   
56.	One aspect of that reputation however is that although I reject the notion that Fox’s mark as used is FOX STALKER rather than STALKER, it is nevertheless the case that the relevant public will often encounter the mark STALKER in a context in which the FOX house brand is present.  For example the brochure which promotes STALKER branded goods is a FOX brochure.  However since Fox’s trade mark is simply the word STALKER, I understood Mr Cuddigan’s submission to be that the house brand (FOX) was irrelevant to the question of infringement under Art 9(1)(b) even though it may play a role in the reputation STALKER actually enjoys in the angling equipment market.  I would be inclined to accept Mr Cuddigan’s submission but I have not heard full argument on the point and it seems to me to be potentially problematic given that on the facts of this case STALKER cannot be said to have a reputation which is truly independent of the house mark FOX.  If the reputation of a mark is to be taken into account under Article 9(1)(b) then it seems to me that the reputation which has to be taken into account is the actual reputation associated with the mark in practice.  Accordingly I will look first at the issue of infringement taking the real nature of the reputation for STALKER into account, since that is likely to be Mr Folly’s best case.  
57.	The next step is to consider the average consumer’s reaction to Mr Folly’s device.  That reaction will include the following considerations.  The average consumer would look at the device as a whole and perceive it comprises two elements.  Clearly the word STALKER is prominent and recognisable.  The image of the fisherman is the other element.  Anyone seeing the device in the manner in which Mr Folly uses it – as a swing tag on clothing or as the banner on the cardboard top above a plastic pack of bits, will regard it as an indication of origin.   In the device, STALKER is not being used as an indication concerning the kind, quality or intended purpose of the goods (or as any other kind of description).  
58.	An average consumer seeing the device, say on a swing tag on a polo shirt or as appearing on the eBay pages, would naturally assume that it indicated that the polo shirt or other product came from the same trade source as STALKER angling goods.  A consumer will probably notice that they had not hitherto seen the originator of STALKER goods using a device in which a fisherman replaces the letter “t” in the word but that would not detract from the overall impression created – that the goods in question are STALKER goods.  After all the image of a fisherman resonates with the nature of the goods themselves.  It is not conveying a different message to the consumer.
59.	The average consumer who is familiar with Fox’s STALKER products will associate them generally with the mark FOX but will also be aware that the goods are often seen marked simply as STALKER, such as a “Stalker bivvy” and “Stalker pod”.  I doubt an average consumer encountering Mr Folly’s device used as a trade mark in relation to angling goods, despite being reasonably circumspect, would place significance on the absence of an indication referring to Fox’s house mark.  Observing the absence of a sign is generally more difficult than observing the presence of one.  However even if the consumer did notice that they had not encountered the mark FOX anywhere relating to Mr Folly’s goods, it seems to me that the impact of that observation would not be sufficient to negative their natural assumption that Mr Folly’s goods were from the same source as the familiar STALKER goods.   The goods in question are identical to those for which the trade mark is registered and in my judgment Mr Folly’s device creates a likelihood of confusion with the mark.  The case in relation to infringement under Art 9(1)(b) is made out and there is no defence under Article 12.
60.	Accordingly since taking Fox’s actual reputation relating to STALKER into account leads to a finding of infringement under Art 9(1)(b) I do not need to consider a case less favourable to Mr Folly, in which Fox’s house mark is left out of the picture.
Mr Folly’s device including “Tackle”
61.	I should also record that I do not see how the addition of the obviously descriptive word TACKLE to Mr Folly’s device makes any material difference.  TACKLE in relation to fishing is descriptive in a completely different sense from STALKER.  As an English word STALKER can be a surname, can refer to a form of hunting outside the context of angling and can be used in the sense of a sinister person who stalks another.  When STALKER appears in the context of angling it may be being used as a description or it may be used as a badge or origin.  The context is important.   On the other hand in the context of angling the word TACKLE plainly always refers to fishing tackle and nothing else.   Thus when an average consumer encounters Mr Folly’s device even including the word tackle, I believe they will assume the goods to which it relates originate from the same source as the goods under the trade mark.  The analysis under Art 9(1)(b) would be materially the same as for the other device.
“STALKER TACKLE” and “STALKER CLOTHING”
62.	It was not clear to me whether Mr Cuddigan put his case in relation to the signs “STALKER TACKLE” and “STALKER CLOTHING”, used without the device, as a case under Art 9(1)(a) or 9(1)(b).  In any case I find that both signs would give rise to a likelihood of confusion under 9(1)(b) when they are used as indication of origin.   The qualification is important because out of context “STALKER CLOTHING” or “STALKER TACKLE” could simply be a description of the clothing in question.   However in the manner Mr Folly has used STALKER TACKLE (on his eBay pages) the term is being used as an indication of origin. 
Validity of the CTM 
63.	Mr Reeves’ evidence addressed the various instances of use of STALKER which Mr Folly relied on.  As mentioned above a number can be put to one side as irrelevant for various reasons: simply unproven, stopped after a letter, licensed etc..  However that leaves a substantial body of instances of use which call for an answer from Fox.   Mr Reeves’ answer is that the use in those instances is use of STALKER in a descriptive sense and I accept his evidence.  An example was given above and I do not need to set out any further examples.  
64.	This evidence does not establish a case that the mark has become a common name in the trade for the product in question as a consequence of acts or inactivity of the proprietor under Art 51(1)(b).   Fox have and had no right to object to that descriptive use of the term.  Accordingly I reject the case under Art 51(1)(b). 
65.	Although Mr Folly did not raise it, I have also paused to consider whether a case under Art 7 (1)(b), (c) or (d) could be made out that the mark was not inherently distinctive at all and should be declared invalid under Art 52.  Of course even if a mark is not distinctive, it can become distinctive by use (Art 7(3) and Art 52(2)).  In this connection Mr Folly stated that when he sought to register his device as a trade mark at the UKIPO, he was told that their view was that the word was un-registrable since it was not distinctive.
66.	It seems to me that although the evidence shows that the word can be used in a descriptive sense, the evidence also shows that the word can be recognised as a trade mark by anglers.  Apart from anything else Mr Folly himself clearly seeks to use STALKER as an indication of trade origin.  A submission that the word has no distinctive qualities from a man seeking to use it as a trade mark would not be an attractive submission.   Accordingly I would reject an argument that the mark was invalid under Art 52 of the Regulation.
67.	Accordingly Community Trade Mark 587808 is valid.
Conclusion on trade mark infringement
68.	It follows from my decisions above that Mr Folly has been found to infringe Fox’s trade mark.  Mr Folly has been and still is using STALKER as a trade mark and he must stop doing so.  
69.	I put the matter this way (using “as a trade mark”) because it is important to appreciate the limits of Fox’s rights.  It would be quite wrong if the trade mark registration system allowed traders to monopolise the English (or any other) language and its use to describe goods in trade.   Fox have the right to prevent rival traders like Mr Folly from using STALKER as a trade mark but they do not have the right to stop rival traders from using the word as a description of angling products.  Mr Reeves’ evidence recognises that others in his field of business do exactly that.  Indeed if Fox had the right to prevent that use by their rivals then their failure to do so would undermine the validity of the mark itself.
Passing off
70.	Mr Cuddigan accepted that if Fox succeeded in their claim for trade mark infringement, passing off did not add anything material.   Since Fox has succeeded in its claim for infringement of trade mark, I need not deal with it. 
Conclusion
71.	Mr Folly has infringed the claimant’s Community Trade Mark 587808 STALKER.   As discussed at the conclusion of the trial, I will consider the orders consequential on this judgment in writing without a hearing.   The judgment will be handed down in open court as normal but neither party need attend.  The parties should submit written arguments as to the consequential orders which should follow.  The submissions should be filed within 14 days of the date of handing down this judgment in court.