The court ruled that the trade mark application should be
refused because its use would take unfair advantage of or be
detrimental to Direct Line's similar mark, even though no
likelihood of confusion in the minds of the public had been
proven.
Direct Line, part of the Royal Bank of Scotland Group, began
advertising with its wheeled telephone in 1990. In September 2004,
esure, part of the HBOS Group, began advertising with a mouse on
wheels, replacing a high profile campaign that featured film
director Michael Winner.
Esure applied to register its mouse on wheels as a trade mark a
few days before its adverts campaign began. Direct Line opposed
that application. It said that the trade mark was similar to its
own and that there was a likelihood of confusion with its own
telephone on wheels. It also argued that the application, if
successful, would take unfair advantage of the reputation that
Direct Line has in its telephone-on-wheels.
While esure's corporate
colours are orange and blue, the trade mark application, pictured
right, was in black and white. If granted, the mark would allow use
in any colour. Direct Line's earlier trade marks were various
representations of its telephone on wheels, two of which were red.
Another, in black and white, is pictured below.
A preliminary ruling by the Trade Mark Registry found no
similarity between the marks and saw no possibility of confusion.
Direct Line requested a hearing. In December 2006, that hearing
concluded in Direct Line's favour. Esure appealed to the High
Court, citing "errors of principle" in Hearing Officer Allan
James's decision.
In a decision
published on 29th June, the High Court ruled in Direct Line's
favour.
Without similarity between marks there can be no infringement.
Justice Lindsay referred to a previous case that described this as
a "threshold test … to be considered in each case by a visual,
aural and conceptual comparison of the mark and sign." Lindsay said
the threshold is a low one and one that was passed by the
similarities between Direct Line's and esure's marks: the services
are identical, the marks are indicators of a means of making
contact and doing business with each provider, and "black road
wheels have been added to that means of communication and give it
the appearance of a vehicle."
The likelihood of confusion is a different test, though. Justice
Lindsay described a "likelihood" as a less stringent requirement
than a probability, but he felt it had not been met by esure's
mark. He said that he found the visual differences "to be so clear
and so readily assessable as differences by an average consumer
that such a person would not take the respective proprietors of
them to be one and the same or, indeed, as economically related to
one another but rather that they were more likely to be rivals in
one and the same service industry."
Accordingly, esure won part of its appeal: there "was no proven
likelihood of relevant confusion," wrote Justice Lindsay. But that
finding did not preclude a finding that a mark could cause damage
to a rival. On that vital point, esure lost.
A branding expert said in an earlier hearing that adoption by
esure of a computer mouse on wheels took unfair advantage of the
distinctive character of Direct Line's telephone on wheels "by
trading off and exploiting, to esure's benefit, the reputation that
Direct Line had established in its mark."
If Direct Line's telephone on wheels was required to share
distinctive features with esure's mouse, he argued, the distinctive
character of Direct Line's mark would be so reduced that it would
not be wise for Direct Line to continue to promote that mark
because it could not be confident that money spent promoting it
would not also benefit esure. The Hearing Officer accepted this
argument, describing the link as "parasitic and unfair."
Justice Lindsay agreed with this reasoning. He said: "[There] is
no necessary inconsistency between, on the one hand, my holding […]
that the public would not regard Direct Line and esure to be one
and the same or economically related but rather would be more
likely to see them as rivals and, on the other, my upholding the
Hearing Officer's decision that were the mouse on wheels to be used
as a mark there would, in the public's mind, be taken to be such a
link between the two that use of the mouse would be parasitic and
unfair."
Accordingly, overall, esure's appeal failed.
Esure no longer uses the computer mouse on wheels in its
advertising, having replaced it with a rodent mouse character
called Mister Mouse. According to esure's website, Mister Mouse was
designed by the same team that designed Direct Line's telephone on
wheels.
