West Law Report

Expert’s report has little value in trademark confusion

Posted in Times Law Report by mrkooenglish on September 10, 2008

From The TimesSeptember 5, 2008

Expert’s report has little value in trademark confusion
Court of Appeal

Published September 05, 2008

esure Insurance Ltd v Direct Line Insurance plc

An expert’s report was of little value in evaluating the likelihood of trade-mark confusion from the standpoint of a consumer.

Case-management directions should be sought at an interim stage requiring the parties to seek directions, which could be given in advance of the trial, as to any proposed consumer survey that the parties might wish to put in evidence at trial.

The Court of Appeal (Lady Justice Arden, Lord Justice Jacob and Lord Justice Maurice Kay) so observed on July 23, 2008, when dismissing the appeal of esure Insurance Ltd from Mr Justice Lindsay ([2007] EWHC 1557 (Ch)) who upheld the decision of Mr Allan James, a hearing officer in the Trade Marks Registry, that there was indirect confusion, under section 5(3) of the Trade Marks Act 1994, between the mark sought to be registered, a red computer mouse on wheels, and that already registered by the opponent, Direct Line Insurance plc, a red telephone on wheels.

LADY JUSTICE ARDEN said that it was difficult to see what was gained from the evidence of an expert as to his own opinion where the tribunal was in a position to form its own view.

LORD JUSTICE JACOB said that the expert’s experience was brand development, brand management and brand evaluation. None of those made him an expert on confusion between trademarks.

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