Several cases in 2004 considered the meaning of “identical” as used in Section 10 of the Trade Marks Act 1994 (“TMA”).
“Identical” is used twice in Section 10, to refer to both identical marks and identical goods or services. Identity of goods or services, however, is largely a question of fact: the more interesting legal issue concerns the approach taken to identity of marks.
In Reed Executive plc v Reed Business Information Ltd the Court of Appeal considered the meaning of “identical” in this context. It referred to guidance given by the European Court of Justice in LTJ Diffusion v Sadas Vertbaudet (Case C-291/00). The ECJ held that “the criterion of identity of the sign and the trade mark must be interpreted strictly”; it requires the new sign to reproduce, without modification or addition, all the elements of the registered mark. However, the ECJ went on to say that the perception of identity with respect to the average reasonably well informed, observant and circumspect consumer must also be considered. In doing so the Court must bear in mind that the consumer receives an overall impression of the signs and only rarely has the chance to make a direct comparison of them: he “must place his trust in the imperfect picture of them that he has kept in his mind”. Also, he is likely to pay less attention to some goods or services than to others. This meant that insignificant differences between two signs are likely to go unnoticed by the average consumer, and that identity may be established notwithstanding such small differences.
The Court of Appeal observed the inconsistency in the ECJ’s ruling: it simultaneously held that identity must be interpreted strictly but also that small differences were permitted. The Court of Appeal took the LTJ Diffusion decision to mean that a significant addition to the original mark precludes identity. This is a change to the position under English law prior to the TMA, where a sign was commonly held to be identical to a registered mark even if the new sign consisted of the original mark and more.
The relevant mark was “Reed Business Information”. The issue was whether this was the same as the mark “Reed”. Reed Executive sought to argue that as the “Reed” elements were the same, and the additions “Business Information” were mere descriptions of the services offered, this was an identical mark. The Court of Appeal, relying on its earlier reasoning, rejected this saying that the words “Business Information” with capital initials were clearly part of the name, and their addition was more than would go unnoticed by the average consumer. Consequently there was no identity of mark.
The other significant aspect of this decision was the clarification of the position of “invisible” infringements under s.10(2) TMA. Invisible uses of marks include metatags, the identifiers that guide a search engine to a web page, and banner advertisements whereby advertisers can pay to have their banner pop up on the search result page. Overturning the High Court decision on this point, the Court of Appeal made clear that use of similar marks in metatags and banners do not constitute infringement as there is no confusion; people understand that web searches are liable to trigger banner advertisements and unwanted results that may not be the subject searched for. It should be noted, however, that the Court of Appeal left open the possibility that metatags and banners could potentially constitute infringement under s10(1) TMA (identical marks for identical goods or services).
The question of how identical is “identical” arose again in the High Court case of IBM v Web-Sphere Ltd. In this case IBM had registered WEBSPHERE as a Community trade mark. The Defendant, Web-sphere Ltd acquired three domain names, www.web-sphere.com, www.web-sphere.net and www.web-sphere.org which IBM alleged were infringements.
One of Web-sphere’s defences was that its sign “Web-sphere” was not identical to “Websphere” owing to the presence of the hyphen. The Court acknowledged the force of Web-sphere’s argument, which was that the sophisticated computer and internet users who might use the services in question would appreciate the significance of a hyphen in a domain name and understand that a visually inconsequential change would result in a completely different service being accessed. This, according to Web-sphere, was a significant change precluding identity of the two signs. However, the Court noted that both IBM’s and Web-sphere’s signs were being marketed via conventional visual means, and that consumers would be relying upon their memories to type the web address accurately. This was only likely if the signs were compared side by side; and, moreover, it failed to consider that visually, the signs were almost identical, and aurally they were exactly so. Consequently the two marks were to be considered identical.
In another High Court case, Compass Publishing BV v Compass Logistics Ltd, Compass Publishing BV (“Publishing”) alleged that Compass Logistics Ltd (“Logistics”) had infringed its mark COMPASS. The particular question that fell to be decided on identity was whether the sign “Compass Logistics” infringed the mark COMPASS. Publishing argued that the addition of “Logistics” to “Compass” in Logistics’ sign added nothing of significance; Logistics was using the whole of Publishing’s mark with a non-distinguishing addition. However, Mr Justice Laddie referred to the Reed decision discussed above and in particular to the Court of Appeal’s decision that the significance of an addition must be considered in determining the question of identity. Applying it to these facts, he had no doubt that the two signs were not identical, saying: “the differences between these two is apparent and would be identified without difficulty or prior coaching by members of the public”.
The question of identity will be a question to be decided on the facts of each case: but it is now clear that a strict traditional English law approach is no longer appropriate and that the more “global” assessment required by the ECJ is the test to be followed.