This article was written for and first featured in Intellectual Property
Simon Bennett and Laura Lumby describe a rare example of a descriptive trademark succeeding in an infringement action and succeeding at summary judgment
Lewis v Client Connection Ltd
6 July 2011
This unusual case concerns an application for summary judgment made by the claimant on the grounds of infringement of his trademark under s10(1), s10(2) and s10(3) of the Trade Marks Act 1994 (“TMA 1994”).
The claimant owns two UK registered trademarks – Money Saving Expert, both relating to “advisory services relating to financial matters provided via an internet website”. The claimant’s website, moneysavingexpert.com, contains advice to assist users to reclaim monies for, amongst other things, mis-sold payment protection insurance.
The defendant operated a telephone-based claims management company under the name “Money Claiming Experts”, which dealt with claims arising from mis-sold payment protection insurance.
The claimant applied for summary judgment on 15 December 2010. He alleged that the defendant had made various telephone calls to members of the public holding itself out as Money Saving Expert or describing itself as the same, and such use amounted to infringement of his trademarks under s10(1), 10(2) and 10(3) of the TMA 1994.
Norris J applied the principles contained in Vaseeharan v Uthyaranjan1 when considering whether to grant summary judgment and concluded that the question to ask is whether the defendant has a “real” (as opposed to fanciful) prospect of success. The defendant sought to bring a counterclaim for a declaration that the claimant’s marks were invalid for descriptiveness and lack of distinctiveness. This counterclaim was resoundly dismissed, with the judge pointing out the marks had acquired a high level of distinctiveness through use. Further, the defendant had failed to provide any positive evidence that the marks had not acquired distinctiveness.
The judge declined to order summary judgment under s10(1), deciding there was a real prospect the claimant would not be able to prove the defendant used or authorised the use of the words “Money Savings Expert” in relation to its business.
The claimant submitted that when the defendant called up its customers, “money…a…ing expert” “quickly spoken” contained differences so insignificant that it would go unnoticed by the average consumer. The judge applied the principles in LTJ Diffusion2 when deciding what constituted identical trademark use. The judge reasoned he would give the defendant the benefit of the doubt and considered there was a real prospect of the defendant successfully defending the argument it had used an identical mark in relation to services identical to that which the claimant’s mark was registered.
The judge reviewed the evidence stating if such evidence was unchallenged it would be sufficient to establish infringement under s10(2). He examined the evidence of witnesses who stated they believed they had heard reference to “Money Saving Expert” and reasoned the claimant had shown “beyond real challenge” that such was the level of distinctiveness of his use of “Money Saving Expert” over an 11-year period that should the case go to trial there was “no real prospect” of finding there was insufficient confusion. Further, the judge applied the case of L’Oreal SA v OHIM3, which follows that marks enjoying a high reputation have a broader degree of protection than marks that do not. Again, the judge found that the defendant had not provided any positive case to rebut the claimant’s evidence of confusion.
The judge therefore granted summary judgment under s10(2).
The judge added he would have allowed the claim under s10(3) and had no doubt the mark had such a distinctive character and reputation that anyone hearing the similar name “Money Claiming Experts” would have drawn a link between the two.
Normally, summary judgment for trademark infringement claims are confined to claims under s10(1) and concern straightforward piracy or counterfeit claims. This case serves as a example that, whilst unusual, summary judgment applications can succeed in claims under 10(2) and even s10(3). In particular, the assertion that the judge would have granted summary judgment under s10(3) is a surprising one and it will be interesting to see whether this section is successfully relied on in the future.
The case demonstrates that trademarks that are at first sight descriptive can nevertheless acquire a high level of distinctiveness through use. In this case the court was no doubt persuaded by the unchallenged evidence supplied by the claimant on its application to register the trademark and the period of time that the unregistered trademarks had been used, something the defendant failed to challenge at the summary judgment hearing.
It is curious that the defendant failed to provide its own evidence in this case, rather it simply criticised the claimant’s submissions and the evidence arising from it. This serves as a pointed reminder that when defending a claim, one should aim to rebut allegations with positive evidence. Albeit in some cases difficult, this will help resist a decision for summary judgment.
1.  EWHC 1083
2.  ETMR 83
3. L’Oreal SA v OHIM (Trade Marks and Designs) (C235/05) (2006) ECR I-57 was applied