Infringement - Claimant proprietor of ‘money saving expert’ - Whether claimant’s trade marks valid

Lewis v Client Connection Ltd: Chancery Division (Mr Justice Norris): 6 July 2011

The claimant was the proprietor of two registered trademarks. In each case the registered mark was ‘Money Saving Expert’, relating to financial advisory services provided via a website.

The defendant company operated a telephone-based claims management business. Until September 2010, it operated under the name ‘Money Claiming Experts’. The claimant stated that in the course of business the defendant made telephone calls in which it held itself out as ‘Money Saving Expert’. He brought a claim against the defendant for infringement of his trademarks under section 10(1) of the Trade Marks Act 1994 (the act). In December 2010, the claimant applied for summary judgment under part 24 of the Civil Procedure Rules. The defendant counterclaimed.

The claimant submitted: first, that when the defendant had contacted potential customers by telephone, its use of the phrase ‘Money Saving Experts’ was so similar to its own trademarks as not to be capable of going unnoticed by customers, infringing his trademarks under section 10(1) of the act.

Second, he submitted that infringement had occurred under section 10(2) of the act, in that the defendant’s sign was so similar to his registered marks and was used in relation to services which were similar to those for which the trademark had been registered, so that there was a likelihood of confusion on the part of the public.

Third, he contended under section 10(3) of the act that infringement had occurred by the defendant using, in the course of its trade, a sign similar to the registered marks; that the registered marks had a reputation; that the use of the sign had been without due cause; and that the use had taken unfair advantage of or was detrimental to the distinctive character or repute of the claimant’s registered marks.

The defendant contended that the operatives making the telephone calls had been employed or engaged by C Ltd, another company, and that the defendant had not caused, procured or authorised C Ltd to use ‘Money Saving Expert’ as its name and was therefore not party to such use. It further submitted that the claimant’s registered marks were invalid, because they were not capable of distinguishing the claimant’s services from those of other undertakings, were devoid of any distinctive character and/or were purely descriptive, and that they had not acquired a distinctive character as a result of the use made of them, under section 3(1) of the act. In considering the issues, the court had regard to a number of witness statements made by individuals who had received phone calls on behalf of the defendant.

The court ruled: (1) to succeed under section 10(1) of the act, the claimant would have to prove that the sign used by the defendant was identical with the claimant's registered marks and had been used in relation to identical services. To succeed under section 10(2) of the act, the claimant needed to establish that the defendant’s sign was similar to is own registered marks and was used in relation to the services which were similar to those for which the trademark was registered, and that by reason of that circumstance there had existed a likelihood of confusion on the part of the public.

To succeed under section 10(3) of the act, the claimant needed to establish that the defendant had used in the course of its trade a sign which was similar to the registered marks; that the registered marks had a reputation; that the use of the sign was without due cause; and that the use took unfair advantage of or was detrimental to the distinctive character or repute of the claimant’s registered marks (see [8]-[10], [14] of the judgment).

On the facts, the claimant had demonstrated beyond real challenge that his use of the term ‘Money Saving Expert’ was so distinctive, sufficient to warrant the registration of his marks notwithstanding the degree to which it was descriptive, and that there was no real prospect of a judge at trial finding that there had been insufficient confusion (see [26] of the judgment). Summary judgment would be given for the claimant (see [27] of the judgment).

(2) The defendant’s plea regarding the employees of C Ltd had been made under section 10(2) of the act, where the complaint was that the defendant had used its own (but similar) name, which use occasioned a likelihood of confusion. Had the employees used an identical name as the claimant's registered marks, then the defendant could have argued that they did so contrary to instructions under section 10(1) of the act.

On the facts, however, the employees of C Ltd had done as they had been instructed, although what they had been instructed to do had constituted an infringement (see [28] of the judgment).

(3) On the facts, there was no real prospect of the defendant establishing that the claimant’s marks were invalid under section 3(1) of the act. The evidence suggested that the witnesses had identified the claimant (and nobody else) with the name ‘Money Saving Expert’ and felt that the ­defendant had exploited the claimant’s trusted name (see [30], [31] of the judgment).

Jeremy Reed (instructed by Taylor Hampton) for the claimant; Jonathan Turner (instructed by Ultimate Law) for the defendant.