esure Insurance Ltd v Direct Line Insurance Plc

This is a renewed application for permission to appeal from the order dated 5 July 2007 of Lindsay J, with the appeal to follow if permission is granted. The issues on this appeal arise out of opposition proceedings pursuant to s 5 of the Trade Marks Act 1994 (“TMA 1994”). The opponents contended that the marks sought to be registered were similar and confusing (s 5(2)(b)) relative to their own, and that the marks sought to be registered took unfair advantage of their own marks (s 5(3)). I start by setting out the material provisions of s 5:

“(2)

A trade mark shall not be registered if because

(a)…

(b)

it is similar to an earlier trade mark and is to be registered for goods or services identical with that or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(3)

A trade mark which-

(a)

is identical with or similar to an earlier trade mark, …

(b)

[repealed]

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, or international trade mark (EC) in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”

The background in brief is as follows. The appellant (“esure”) sought to register an image of a computer mouse on wheels for insurance and financial services within class 36. No colour was specified. The respondent (“Direct Line”) is a pioneer of the direct selling of insurance services to the public. It objected, pointing to its use of an image of a red telephone on wheels pursuant to various trade mark registrations within the same class. Both images are three-dimensional. Direct Line adduced survey evidence in support of its evidence on confusion, but this was rejected by the hearing officer because it might have been affected by an advertising campaign conducted by Direct Line. The judge upheld the hearing officer’s decision on this point and we have not been concerned with it. But for the defects in the survey evidence, we might not have been concerned with the questions of evidence with which we have been concerned.

The hearing officer in the Trade Marks Registry (Mr Allan James) upheld Direct Line’s opposition ([2008] RPC 99). He held that there was indirect confusion. The judge dismissed an appeal ([2008] RPC 143). The judge held that there was a material error of principle in the decision of the hearing officer on confusing similarity under s 5(2)(b) of the TMA 1994 in that (a) a threshold level of similarity had to exist and (b) there was no evidence of the likelihood of confusion. Nonetheless, the judge upheld the decision of the hearing officer under s 5(3). esure contends that the judge was right on confusing similarity and that, had he not given inappropriate weight to the evidence of a branding expert on the unfair advantage issue, he would have reached the same conclusion on that point too, with the result that the opposition would have failed. So we are concerned with issues as to the role of expert evidence under s 5, and, in addition, the consequences of non-confusing similarity between non-identical marks under s 5(3). esure’s case is that in those circumstances the conditions in s 5(3) cannot be fulfilled, particularly where these is no survey evidence in support.

Both s 5(2)(b) and s 5(3) are designed to implement provisions of Council Directive 89/104 (“the trade mark directive”). They must, therefore, both be interpreted so far as possible so as to give effect to the trade mark directive as interpreted by the Court of Justice of the European Communities (“the Court of Justice”). Under s 5(2)(b), there are two questions: similarity and the likelihood of confusion. The Court of Justice has held that the question whether there is a likelihood of confusion is to be determined (a) globally, that is by taking an overall impression of the two marks and (b) from the standpoint of the average consumer (as to (b), see SABEL,CaseC-251/95 [1997] ECR 1-6191).

Issues were raised below which are not pursued on this appeal. Accordingly, it is unnecessary for me comprehensively to summarise the decisions below. (When I refer to paragraphs of the hearing officer’s decision or the judge’s judgment, I add the letter H or J respectively to identify the relevant decision.)

The following provisions of art 4 are relevant:

“(1)

A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a)

…

(b)

if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(3)

A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark.

(4)

Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(a)

the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;…”

The Court of Justice has held that art 4(3) applies both where the goods or services are similar and where they are dissimilar: Davidoff v Gofkid,CaseC-292/00[2003] ECR 1-00389.

Some of the decisions of the Court of Justice concern arts 5(1)(b) and 5(2), which are the parallel provisions on infringement. They provide as follows:

“(1)

The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a)

any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b)

any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

(2)

Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

The hearing officer rejected esure’s argument that there was a minimum level of similarity. It was sufficient if there was any visual, aural or conceptual similarity between the marks which is likely to be recognised as such by an average consumer (H[110]). The level of similarity would depend on the circumstances of the case. In the present case, taking the requisite overall view, by the attaching of wheels to an electronic communication device, there were similarities, which were in part visual (due to similarities in the styling) but more particularly, conceptual, between the two marks (H[114], [134]). This would be confirmed if esure used red for its device. If the colour red was used, there was likely to be indirect confusion with Direct Line’s mark (H[143]). The objection under s 5(2)(b) succeeded.

The hearing officer rejected the submission that under s 5(3) account could be taken of the risk that future development of the mark would be fettered (H[150]). S 5(3) did not require proof of direct or indirect confusion. It was sufficient that the public would make a link between the mark and the sign. This could lead to “free-riding” (H[144], [163]). The hearing officer accepted that the public would make such a link and that that would enable esure to take unfair advantage of Direct Line’s marks (H[153], [164]) and that it would be detrimental to their distinctive character. The objection under s 5(3) was upheld (H[164] and H[172]).

After reviewing a number of decisions of the Court of Justice, but particularly Vedial SA v OHIM, France Distribution, the judge concluded that the hearing officer was wrong to say that there was no minimum level of similarity that had to be shown. If this threshold was not met, there was no need to consider whether there was any likelihood of confusion. The test was whether the overall impression of the various marks was such that the likelihood of confusion could not be thereby created (J[46]). This threshold test was low, and was satisfied in this case (J[94]).

A likelihood of confusion between the competing marks had to be substantiated by evidence: see Marca Mode CV v Adidas AG and others Case C-425/98 [2000] ECR 1-4861 at [39], which emphasised the need for the national court to assess the evidence (J[65]). It again involved a global appreciation of the relevant circumstances. The requirement for a likelihood of confusion was not satisfied in this case. There were visual differences that would lead the consumer to think that the parties were competitors rather than associated enterprises. Direct Line’s mark indicated that services were offered by telephone and esure’s proposed mark suggested communication by way of a computer. The conceptual element suggested that Direct Line was involved in insurance business negotiated over the telephone whereas esure’s business was online. But the evidence of confusion was a survey which the hearing officer had rightly rejected because it was done after an extensive advertising campaign by Direct Line featuring both a telephone on wheels and a mouse on wheels and the relevant date, which was the date of the relevant application (J[98]). The two images (the telephone on wheels and the computer mouse on wheels) were recognisably different (J[99]). The judge’s conclusion on confusing similarity was as follows:

“Splitting the marks down into their respective visual, aural and conceptual elements, I find there to have been no aural similarities and that the visual differences (even if one considers the mouse on wheels being in red or in red with black wheels) as 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. As for the conceptual element, that, as it seems to me, only goes to support that view; the idea behind the one is that business can be done direct with the provider by telephone, of the other by on-line communication. They are likely to be perceived as alternatives. The conceptual element serves to bolster the difference which the visual element suggests.” (J[109])

Accordingly esure succeeded under s 5(2)(b). On the other hand, save that the judge considered that the test applied by the hearing officer was too high (J[116]), the judge considered that the hearing officer did not err in his decision on s 5(3). The judge held that s 5(3) required that the average consumer should perceive there to be an “additional link” rather than confusion between the competing marks. Here the hearing officer could use the evidence of his own eyes (J[117]). The branding expert, Mr Blackett, Group Deputy Chairman of Interbrand Group Ltd, an international branding consultancy, called by Direct Line, had given evidence that the public would draw the conclusion from the marks that Direct Line and esure were associated (J[117]). The judge was not clear whether the hearing officer had found the additional link proved, but if he had not done so, he could have done so. The branding expert also considered that esure’s sign would take advantage of Direct Line’s mark. Here again the hearing officer could also use his own eyes and form a view (J[120]). In addition, esure’s mark was likely to reduce the value of Direct Line’s marks (J[122]). The judge explained that he was entitled to come to the different conclusions on s5(2)(b) and s 5(3) to which he came for the following reasons:

“[124]I should add this: there is no necessary inconsistency between, on the one hand, my holding, when freed from respect for the Hearing Officer's decision, 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. In the former case I am free, for reasons I have given, to decide as I would have done on the evidence; in the latter and in the absence, as I have held, of error of principle, I am constrained so that what would have been my decision on the evidence is completely irrelevant.”

Mr Blackett had no specialist knowledge of the insurance market. In his first expert's report dated 23 July 2005, Mr Blackett opined that the brands had always been important in the insurance sector. He said that, in his capacity as an expert on branding, he considered the Direct Line telephone device both striking and original. He further opined that the device was now well-known and had achieved iconic status. On confusion he said this:

“Confusion

It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business. The use by esure of an object of a similar oblong, block-like shape, also on chunky wheels – which up to this time have been the ‘property’ of Direct Line – would lead a significant number of the public to think that the esure mouse on wheels was somehow connected with Direct Line, particularly as both companies are involved in insurance. The fact that the esure mouse on wheels is also a desk top object could increase the confusion which I believe will arise. Confusion is especially likely to arise in the case of the esure mouse on wheels if used in the colour red, as at appendix 4 (“the red esure mouse on wheels”), as the colour red has also in my view become the ‘property’ of Direct Line and a major component of the Direct Line Telephone Device. It is not uncommon for companies to extend their brands to embrace new products and services using their well established brand device, or create similar devices as a ‘family’ of related devices. It is my opinion that the use by anyone, including esure, of a device similar to the Direct Line Telephone Device, such as the esure mouse on wheels, would cause confusion among members of the public.”

He also stated that he expected that Direct Line would be restricted in its advertising strategy by the esure mouse on wheels if it were registered as a trade mark. He considered that an important effect of this restriction on its advertising strategy would be to hamper Direct Line's ability to extend its business scope through the introduction of new products and services under the Direct Line telephone device. In cross-examination, Mr Blackett confirmed that his belief that the public would be confused into thinking that esure was in some way connected with Direct Line was a matter of his opinion, based on his experience. In his opinion the Direct Line telephone device and esure’s computer mouse were similar objects. He accepted that consumers would not visualise the marks in the way that he had described them, that is, as oblong block-like objects.

In his second report dated 15 June 2006, Mr Blackett expressed the view that the computer mouse played a vital role in the preparation and transmission of written messages and was therefore integral to the process of communication through the online medium. He considered that the red telephone on wheels and the computer mouse on wheels both had distinctiveness through movement and wheels. Apart from that, they were basic desk top objects. He considered that the use by esure of its mark would dilute the originality and the unique appeal of Direct Line's telephone on wheels device. There would inevitably be an erosion of the distinctiveness of the brand. He added:

“41.

I would expect this to have a negative impact on Direct Line’s sales. In a market where the consumer has direct contact with the supplier, the ability of the brand to stand out is of the utmost importance. If consumers see other suppliers imitating the hitherto unique features of Direct Line’s brand then their faith in what makes Direct Line special and different is likely to be weakened.

42.

Mr. Graham denies having any wish to ride on Direct Line’s coat-tails. Again, whether esure wants it or not, in my view, esure will obtain considerable benefits from adopting its mouse-on-wheels logo. The great benefit to esure is that it can take advantage of the familiarity and prestige that Direct Line has built up over the years in its telephone-on-wheels brand.

43.

Direct Line will have set certain standards in service quality and value and these will inevitably be symbolised for consumers by Direct Line’s powerful brand identity, of which the telephone-on-wheels is a key component. By dint of association, consumers will expect comparable standards of service and value from esure if it associates esure with Direct Line via its mouse-on-wheels. esure would without doubt benefit from the reputation and positive imagery that Direct Line has established under its brand.

44.

Direct Line’s reputation will have been achieved at considerable expense on the part of the company. It would, in my opinion, be unfair to allow esure to capitalise on this.

45.

esure’s use of a mouse-on-wheels could also open the door to other suppliers of insurance to use other commonplace desktop objects – for example laptop computers or handheld communication devices like mobile telephones or the Blackberry – on wheels as branding devices. This danger is illustrated by esure’s attempt (now dropped, for whatever reason) to register a series of mainly computer related desktop objects on wheels. I would expect it to be harder for Direct Line to prevent further ‘family likeness’ applications such as these if it were no longer the unique user of a desktop device on wheels. In my view, the registration of the mouse-on-wheels by esure may restrict Direct Line’s future development of its brand.”

In its grounds of appeal, esure contends that Mr Blackett gave evidence on consumer perception, confusion, the likelihood of association, unfair advantage, detriment, damage and a fettering of Direct Line's future activity and that these were matters for the tribunal and not matters of evidence to be given by an expert. The judge ought to have rejected this evidence in relation to s 5(3). Alternatively the evidence was severely undermined in cross-examination. Moreover, it was wrong to use one comparison of marks under s 5(2) and another under s 5(3). The comparison was in any event wrong in principle because it was made at the wrong level of generality (desk top communication devices with wheels). Alternatively the evidence was not cogent. As to the threshold test for similarity, this is not a low one as the judge held (see SABEL and Vedial). The judge should have set aside the hearing officer’s conclusion as to the existence of a link under s 5(3) and reached his own conclusion. There could not be a link where the goods or services were identical but the similarity between the two marks was such that the average computer consumer would not confuse them.

I now turn to the submissions of the parties. I merely summarise the parts relevant for the purposes of my decision.

Mr James Mellor QC, for the appellant, submits that the judge was right on confusing similarity and that that conclusion ought by parity of reasoning to have led him to the conclusion that there could be no objectionable link for the purpose of s 5(3). He does not seek to reopen any conclusion of fact of the hearing officer. His challenge is based on the hearing officer’s evaluation of the facts for the reason that the appeal court will not intervene in relation to the lower court’s evaluation of facts unless there is an error of principle.

On s 5(3), the judge was wrong to consider that expert evidence rather than that of consumer perception from the public was required. Evidence is required that the average consumer would make a link between the marks of Direct Line and those of esure (see Adidas v Fitnessworld C-408/01 [2003] ECR 1-12537). He submits that consumer perception cannot be proved by "expert" evidence but only by evidence of what consumers actually do or do not think: The European Ltd v The EconomistNewspaper Ltd [1998] FSR 283 at 291. The judge had failed to consider whether Mr Blackett’s evidence should be given any weight. The reasons which Mr Blackett gave had nothing to do with the views of the average consumer. Mr Blackett saw the two marks as desktop objects or as oblong block-like shapes. The average consumer would, however, have seen them as a telephone on wheels and a mouse on wheels.

In addition, the judge had failed to realise that the evidence of a branding expert was worthless, and in any event had been undermined in cross-examination. Mr Blackett accepted that the average consumer would see the objects as respectively a telephone on wheels and a mouse on wheels. He accepted that the average consumer would not conceptualise the two marks in the way that he had done in reaching his conclusion. He accepted that his views about confusing similarity were not based on any relevant expertise. Likewise the judge was wrong to rely on the evidence of Mr Tildesley of Direct Line on damage and dilution.

The judge was wrong to take the view that evidence of a branding expert was more likely to be relevant under s 5(3). In so far as the judge relied on Antartica Srl v OHIM Case T-47/06 [2007] ETMR 77, there was no material difference between the evidence required under s 5(2)(b) and that required under s 5(3).

Here the hearing officer and the judge both made an error of principle in not dealing with similarity as a precondition. If he had done so, the hearing officer would not have found that the trade mark could not be registered under s 5(2) and the judge would not have upheld his decision under s 5(3). In any event there was no evidence to support a finding of unfair advantage under s 5(3).

Mr Mellor submits that similarity must be assessed from the standpoint of the notional average consumer. Here the opposition has been upheld only on the basis that the consumer sees the mark as an “oblong block-like shape on wheels”. This is counter-intuitive. Mr Blackett's approach was fundamentally wrong. The judge was in error in failing to detect it.

Mr Mellor submits that the Court of Justice adopts a highly structured approach (explained below) whereas Direct Line argues for a “soup" approach which has the effect of broadening trade mark protection. By a “soup” approach, Mr Mellor means that every factor is thrown into the soup from the start and then a view is formed. This cannot be reconciled with the structured approach required by the Court of Justice (see L’Oréal v OHIM,Case C-235/05P, SABEL, Lloyd Case C-342/97 [1999] ECR1-3819). This court should re-affirm the structured approach.

The structured approach under s 5(2) involves three conditions. The first condition is that the two marks are either identical or similar. This requires a global appreciation of the visual, aural or conceptual similarity of the marks in question from the viewpoint of the average consumer. It is necessary to take into account the category of goods and the circumstances in which they are marketed in order to discover which aspect of similarity is relevant (Lloyd, [27]). It is vital to consider whether this condition is satisfied separately from the other conditions to avoid reaching a view on the basis of an initial impression. The second condition is that the relevant goods or services are identical or similar. All relevant factors should be taken into account (Canon KK v Metro-Goldwyn-Meyer Inc, C-39/97 [1998] ECR 1-5507, [23]). The third condition is that there exists the likelihood of confusion because of the identity or similarity of the marks or the identity or similarity of the goods or services. The court must make a global assessment of the likelihood of confusion. At this stage, and not before, the court must take account of both the distinctiveness of the earlier mark and the interdependence between the relevant factors (see, for example, SABEL at [24]). The factors relevant to this stage must not be taken into account in assessing whether the first two conditions are satisfied. That was the error which both the hearing officer and the judge made. Mr Mellor criticises the holding of Mr Geoffrey Hobbs QC in Il Pinguino/Penguin BL 0/144/05 that there was a single composite question raised by art 4(1)(b), rather than a structured approach.

Mr Mellor submits that in Vedial the Court of Justice laid down the following propositions:

Mr Mellor submits that in the same way s 5(3) requires a structured approach. He submits that the court should first determine the identity or similarity of marks in the mind of the average consumer, and then, secondly, consider whether the earlier mark has a reputation in the member state (not in issue in this case). Thirdly, the court should perform a global assessment to determine whether the similarity of marks causes the average consumer to perceive a relevant link between them.

Mr Mellor submits that the hearing officer’s failure to follow a structured approach was in itself an error of law and that the judge should have set aside his decision on that basis alone. He telescoped the question of similarity with that of confusion. That led him to take into account the identity of services and the distinctive character of Direct Line's mark, when those matters were irrelevant to the assessment of similarity of the marks. He gave insufficient weight to the differences between the marks. He failed to use the same assessment of similarity for determining whether the condition of similarity was met for performing the global assessment of the likelihood of confusion. He held that any similarity was sufficient to satisfy the condition and that there was such similarity between the marks in issue (see H[110], [114]). He assessed similarity at the wrong level of generality because he ignored the evidence that the average consumer would see the marks as a telephone on wheels and a mouse on wheels not as a desktop communication device on wheels (H[134]). The level of generality must be that of the average consumer and it affects the width of the protection given to trade marks. Trade mark protection is only available for the representation of a mark and not for a concept. Therefore it is vitally important to work at the right level. The hearing officer repeated these errors in his findings on s 5(3).

Mr Mellor submits that the judge also failed to follow the structured approach. He wrongly held that the principle of interdependence relates to the assessment of similarity, when the Court of Justice in Lloyd held that it related to the likelihood of confusion (J[26], [36]). The judge also held that there was a low threshold test for similarity. He should have held that there was a condition of similarity and that similarity was determined by the structured approach. The judge also erred by finding that there were two distinct assessments of similarity, one for the purposes of passing a threshold and one for the assessment of likelihood of confusion. He nevertheless came close to the correct application of the structured approach to similarity (see J[109] set out above). On the other hand, in his assessment of the visual differences he erred by mixing the first and third conditions of the structured approach. However, Mr Mellor seeks to uphold his conclusion on similarity. It was an inevitable consequence of the judge’s holding in J[109] that the marks were not similar. The judge ought to have held that the condition of similarity was not met.

There was a “massive contradiction" in the judge’s judgment in overruling the hearing officer on similarity but yet upholding his decision on s 5(3). The judge's explanation of the anomaly was not grounded in reality. The judge failed to appreciate that the hearing officer’s comparison was wrong in law. The judge was entitled to interfere. The only test is whether the judge has a real reluctance to interfere: re REEFTradeMark [2003] RPC 5, [28]. The judge was wrong not to hold that the hearing officer erred in principle in applying s 5(3) because he had failed to follow the structured approach. He should have substituted his findings on similarity for those of the hearing officer and so held that the condition of similarity for s 5(3) was not met.

In conclusion, the marks were too different to give rise to a likelihood of confusion and so the condition of similarity of marks is not satisfied. The same follows under s 5(3).

Alternatively, Mr Mellor submits that there was no evidence to support a finding of likelihood of confusion and no probative evidence of a link or unfair advantage or detriment.

Mr Mellor submits that there is no separate low "threshold" of similarity. But there is a condition for similarity of marks which must be satisfied. If the condition is not satisfied, the objection under either s 5(2) or s 5(3) must fail.

Mr Mellor submits that it was likewise not open to the judge to rely as he did (see J[122]) on the evidence of Mr Tildesley, a marketing director of Direct Line. He, likewise, could not give evidence of the perception of an average consumer.

Mr Geoffrey Hobbs QC, for Direct Line, invites the court to dismiss the application for permission on the grounds that there is no real prospect of success. In his submission, esure’s real challenge is to the evaluation of evidence. However, at the hearing before the hearing officer, esure raised no objection to the admissibility of any evidence on which the hearing officer relied. Moreover, esure invited the hearing officer to evaluate the evidence, a principal part of which was its cross-examination of the evidence to which it now objects. It is therefore far too late for esure to contend that any evidence should have been excluded. Trade witnesses can give evidence of their opinion as to the likely reaction of persons in relation to matters within their sphere of work: Taittinger SA v Allbev Ltd [1993] FSR 641, 663. At least where the goods are normally sold to the public (c.f. Guccio Gucci v Paolo Gucci [1991] FSR 89 at 91), the judge can form his own view and is not confined to the view of the witnesses. The judge erred in holding that the hearing officer could not make a finding as to confusion unless it was substantiated by evidence. It was not, as the judge suggested, so finely balanced as to require evidence. Moreover, a judge is entitled to make a decision based on his own experience, even in the absence of evidence (see Re GETrade Mark [1973] RPC 297, 321).

The judge was wrong to interfere with the holding of the hearing officer on confusing similarity. Moreover, the judge should not have substituted his view for that of the hearing officer. The judge should have reached the same conclusion under s 5(3) rather than relying on the evidence of the branding expert. The decision of the hearing officer on confusing similarity is easily understood when it is appreciated that the three-dimensional images representing the marks could both be red in colour.

The determination of similarity and confusion requires a global assessment in which all the relevant factors are taken into account: see, for example, Shaker v OHIM, a decision of the Third Chamber of the Court of Justice dated 12 June 2007, Case 334/05P. I will refer to this below as “LIMONCELLO”.

The judge should have held that use of the mark applied for by esure would fetter Direct Line’s ability to exploit the commercial value of its mark in the future.

CPR 52.3(6) provides:

“Permission to appeal may be given only where—

(a)

the court considers that the appeal would have a real prospect of success; or

(b)

there is some other compelling reason why the appeal should be heard.”

This is a second appeal, and accordingly CPR 52.13 applies:

“The Court of Appeal will not give permission unless it considers that:

(a)

the appeal would raise an important point of principle or practice; or

(b)

there is some other compelling reason for the Court of Appeal to hear it.”

We have been taken to numerous authorities in the Court of Justice, the Court of First Instance and OHIM. These cases were often merely further applications on their particular facts of jurisprudence established in earlier cases, and so I do not need to go through all the cases which have been cited.

Confusion must be ascertained from the viewpoint of the average consumer:

“The perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (see SABEL, paragraph 23, Lloyd Schuhfabrik Meyer, paragraph 25, and the order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 29).” (L’Oreal SA v OHIM Case C-235-05 at [41])

A global assessment must be made of all the relevant factors. As the Court of Justice stated in L’Oréal, this involves, inter alia, examining all the aural, visual and conceptual similarities of the marks and assessing the weight to be given to each of the relevant characteristics:

“46.

In addition, it should be noted that the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but that such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (see order in Case C-3/03 P Matratzen Concord v OHIM, paragraph 32).”

In some circumstances, however, there may be a distinctive or dominant component in the mark, which affects the overall impression given to the average consumer (see, for example, LIMONCELLO). If there is, it must be taken into account as such.

The global assessment of all the relevant factors involves an iterative process between the relevant factors, in particular the similarities in the goods or services and the similarities in the marks. This is known as the principle of interdependence of the relevant factors. Thus, for example, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see for example: Lloyd Schuhfabrik Meyer v Klijsen Handel CaseC-342/97 [1999] ECR 1-3819 at [19]).

The Court of Justice has given guidance as to how to determine whether the average consumer would have considered the goods or services to be similar and also whether there would have been a likelihood of confusion. Thus in Lloyd Schuhfabrik Meyer v Klijsen Handel, the Court of Justice held:

“26.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (see, to that effect, Case C-210/96 Gut Springenheide and Tusky [1998] ECR I-4657, paragraph 31). However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question.

27.

In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.”

In his argument, Mr Mellor has emphasised a structured approach in the jurisprudence of the Court of Justice and in the Court of First Instance. A structured approach involves isolating three conditions necessary for confusing similarity for the purposes of s 5(2)(b) of the TMA 1994, namely the similarities in the goods or services, the similarities in marks and the likelihood of confusion. There is no doubt that those three matters must be considered. However, the need for a global assessment and the principle of interdependence described above contradict any notion that these three matters are to be treated as separate watertight compartments. Put another way, the risk of emphasising a structured approach is that it suggests that questions as to similarity of marks and questions as to the similarity of goods or services to which the marks are applied can be meaningfully isolated from questions about confusion. If “the soup approach”, as he calls it, refers to the principle of interdependence, then it would be inconsistent with the jurisprudence of the directive to reject that approach in favour of his structured approach. For the purpose of resolving this appeal, it is not necessary for me to say more about the structured approach.

In a lengthy passage at J[31] to J[52], the judge considers whether there is a minimum or threshold level of similarity, which is required to be shown. Neither counsel sought to uphold the judge's approach on this. The judge's conclusion that there was a threshold level of similarity differed from that of Lewison J in L’Oréal v Bellure NV [2007] ETMR 1. The judge’s main basis for it was an inference which he drew from Vedial SA v OHIM, France Distribution Case C-106/03 P of October 2004 [2004] ECR I-9573. In that case,the Court of Justice dismissed an appeal against the decision of the Court of First Instance that two marks both using the name Hubert but one using that name with the prefix “Saint” were not similar. The judge held that this meant that the similarity in respect of the words used in both marks was insufficient to amount to similarity for the purpose of the trade mark directive. But it does not follow that the reason for the Court’s conclusion was that there was some minimum level of similarity. In my judgment, it held that there was a failure to show similarity on a global assessment of all the relevant factors. I do not find any threshold condition in the jurisprudence of the Court of Justice cited to us. Moreover I consider that no useful purpose is served by holding that there is some minimum threshold level of similarity that has to be shown. If there is no similarity at all, there is no likelihood of confusion to be considered. If there is some similarity, then the likelihood of confusion has to be considered but it is unnecessary to interpose a need to find a minimum level of similarity.

Accordingly, I incline to the view that there is no threshold condition of similarity. The point is of no consequence for the present case, because the judge held that any threshold condition of similarity was very low and was exceeded in the present case. Thus, the hearing officer’s error, as the judge saw it, on this point would not have justified setting aside his conclusion under s 5(2)(b). As the point makes no difference in this case, I leave it to be finally determined when it is material.

I must now turn to the central feature of the judge’s judgment. The judge held that there was no proven likelihood of relevant confusion for the purpose of s 5(2)(b) but upheld the decision of the hearing officer on s 5(3) that the adoption by esure of its proposed mark would exploit the reputation that Direct Line had in its mark. He justified that apparent inconsistency in terms of the standard of review, which he was bound to apply, as the appellate tribunal. He was entitled to form his own view for the purposes of s 5(2)(b) because, in his judgment, the hearing officer’s decision had been arrived at without any evidence. He was not able to intervene in the hearing officer’s findings under s 5(3) because he had had before him evidence from Mr Blackett. Mr Mellor's submission is the inconsistency in the judge's approach can be resolved in esure’s favour, because Mr Blackett’s evidence should not have been accepted for s 5(3) purposes and without it the opposition under that provision failed. However, that is not the only way in which the inconsistency can be resolved. It can also be resolved if the judge’s conclusion about the evidence to support the hearing officer’s decision under s 5(2)(b) was wrong, and I propose to consider that possibility directly.

It is clear that, when the hearing officer made his decision as to the perception of the average consumer under section 5(2)(b), he did so on the basis of his own observation of the features of the two marks, so far as those features were relevant. He did not for instance regard himself as bound by preliminary indication given by the Trade Marks Registry. Nor did he have regard to the evidence of Mr Blackett, or any other expert. He formed his own view by looking at the marks and he concluded as follows:

“114.

In my view, a distinctive feature of both marks is the unusual juxtaposition of wheels attached to (albeit recognisably different) electronic communication devices. I find that this gives rise to a recognisable similarity between the marks. Consequently, unlike the CFI’s factual findings in the Vedial case, I do not accept that the presence of such a common feature in these marks gives rise to no similarity between them. The answer to the question of whether there is sufficient similarity between the marks depends on whether the applicant’s mark is liable to have the effects in section 5(2) and/or 5(3).”

At H[129], the hearing officer rejected any claim of direct confusion. At H[134] to [138], he considered whether the average consumer would have thought that there was a link between Direct Line and esure. He came to the conclusion at H[143] that, in all the circumstances, the use of the mark applied for by esure in the colour red would be likely to cause indirect confusion with Direct Line's earlier mark (H[143]). His process of reasoning depended on his assessment of what the average consumer would have thought if presented with the computer mouse. He made his own assessment, save in respect of the market position of Direct Line (see H[139]), for which there was no doubt other evidence.

Mr Mellor's case is that there has to be evidence to support a conclusion of this nature. As to this, the Court of Justice has in its judgment in Adidas AG v Marca Mode CV CaseC–102/07[2008] All ER (D) 147 (handed down after the hearing in this case) and in earlier cases held that it is for the national court to determine questions of similarity and confusion. These authorities therefore make it clear that it is for the national court to determine how allegations of similarity or confusion are to be proved. No authority of the Court of Justice has been cited to us that suggests otherwise. The judge referred to the judgment of the Court of Justice in Marca Mode, above, at [39], but all the Court of Justice said there on this point was that the national court had to assess the evidence in each case, without stipulating the nature of the evidence to be so assessed. I further note that in Sigla SA v OHIM Case T-215/03 [2007] ETMR 79 at [45], the Court of First Instance held that in opposition proceedings before the Office and the Boards of Appeal of OHIM facts which were likely to be known by anyone or which could be learnt from generally accessible sources could be taken into account. If this is so, it is difficult to see why the judge could not use his own judgement in cases where that is permitted by national law.

By contrast, Mr Hobbs submits that a judge is entitled to make a decision based on his own experience, even in the absence of evidence (see Re GETrade Mark). The judge did not have the benefit of this authority.

In my judgment, Mr Hobbs is correct on this point. What the hearing officer had to determine was what the average consumer would have thought of the two marks and whether they would have confused him. The services sold by the parties were identical and were of a kind familiar to members of the public. In those circumstances, I see no reason why the hearing officer should not have decided the issue of similarity on his own in the absence of evidence apart from the marks themselves and evidence as to the goods or services to which they were, or, in the case of esure’s mark, were to be applied. As Lord Diplock held in Re GETrade Mark at 321:

“My Lords, where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused… But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question". By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced, but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.

The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself.”

An example of such a decision would, as Mr Hobbs submits, be Spalding v Gamage (1915) 32 RPC 273. The GE Trade Mark decision was under the provision in the Trade Marks Act 1938 for the rectification of the Register of Trade Marks. But the principle that it enunciates is one which is derived from the law of evidence and the decision is thus not limited to trade marks, or the 1938 Act.

Neither party sought to challenge any decision of the hearing officer that involved an evaluation of the facts if it was one he was entitled to make on the evidence before him. As Robert Walker LJ said in re Reef Trade Mark at pages 109 to 110:

“In this case, the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing off claim… On the other hand, the hearing officer did not hear any oral evidence. In such circumstances, an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”

It follows from the above that in my judgment the judge was wrong to interfere with the decision of the hearing officer on s 5(2)(b), and that his decision on that point must be set aside. That means that there is no inconsistency in the two parts of the hearing officer’s decision. It also means that the opposition must in my judgment now necessarily succeed and therefore that it is unnecessary for this court to consider whether the judge’s decision on s 5(3) was correct. In those circumstances, I also need not refer to the opinion of Advocate General Sharpston in Intel (Case C-252/07), which was handed down after the hearing in this case.

Mr Mellor sought to persuade the court that it should hold that consumer surveys should ordinarily be required whenever it was sought to prove consumer perception. In the light of the conclusion that I have come to on this aspect of the application and appeal, I reject that submission. The evidence required in any particular case will depend on the circumstances of the case.

I propose to conclude with two important observations of a general nature.

Firstly, given that the critical issue of confusion of any kind is to be assessed from the viewpoint of the average consumer, it is difficult to see what is gained from the evidence of an expert as to his own opinion where the tribunal is in a position to form its own view. That is not to say that there may not be a role for an expert where the markets in question are ones with which judges are unfamiliar: see, for example, Taittinger SA v Allbev Ltd [1993] FSR 641. However, the evidence of Mr Blackett on confusion was of no weight in this case: he merely gave evidence as to his own opinion about a market which would be familiar to judges. If more cogent evidence of customer perception is needed, the traditional method of consumer surveys must (subject to my second point) carry more weight and is to be preferred. Mr Mellor went so far as to suggest that expert evidence is inadmissible on the question of consumer perception. I do not consider that it is necessary to go quite that far because there are exceptional situations, but I note that in The European Ltd v. The Economist Newspaper Ltd [1998] FSR 283 at 290-291 Millett LJ, with whom Hobhouse and Otton LJJ agreed, considered that the evidence of trade witnesses who gave their opinion of the likelihood of confusion was "almost entirely inadmissible". He added: “It is not legitimate to call such as witnesses merely in order to give their opinions whether the two signs are confusingly similar. They are experts in the market, not on confusing similarity.” The cogency of their evidence must in any event, save where expert knowledge of the particular market is required, be in real doubt. Its use may therefore lead to a sanction in costs. (Mr Mellor also made objections to the evidence of Mr Tildesley, but in the circumstances it is unnecessary for me to deal with these separate objections.) If the objection can be dealt with as one going to weight, this is often the course which the court takes: Re M & R (Minors) (Sexualabuse: expert evidence) [1996] 4 All ER 239.

Secondly, consumer surveys are costly to produce. They can, moreover, sometimes be based on the wrong questions and thus produce irrelevant or unhelpful responses or for some other reason, as in this case, be of no evidential value. There is much to be said for the practice initiated by the late Pumfrey J (as he then was) in O2 Ltd v Hutchison 3G Ltd [2005] ETMR 61, and subsequently followed by Rimer J in U K Channel Management Ltd v E!Entertainment Television Inc [2008] FSR 5. Under this practice, case management directions are given at an interim stage requiring the parties to seek the directions of the court as to the scope or methodology of any proposed consumer survey that the parties may desire to put in evidence at trial. Those directions can then be given in advance of the trial (see, for example, the further proceedings in the U K Channel Management case given by Lewison J, [2007] EWHC 2339 (Ch)).

My object of referring to this developing practice is to give it wider publicity and to encourage practitioners in this field to use this mechanism, so that any waste of costs and court resources is minimised.

In my judgment, having regard to the very full submissions that we have received, permission to appeal should be given. The complexity of the challenge to the judge's order is such that it cannot properly be examined without hearing a full appeal. Complexity of this order can in my judgment constitute a “compelling reason” for the grant of permission, including permission for a second appeal, for the purposes of CPR 52.3(6) and CPR 52.13. Usually, the conditions necessary under CPR 52.13 for a second appeal are interpreted as being separate and distinct from those for a first appeal under CPR 52.3(6) (see Uphill v BRB [2005] 1 WLR 2070 at [24]). However, there is in my judgment no reason why the same factor cannot qualify as a compelling reason under both those provisions. In addition, there was a real prospect of success in this case in showing that the judge had, in a material respect, incorrectly exercised his appellate function. This also constitutes a compelling reason for the grant of permission for a second appeal for the purpose of CPR 52.13 because the second appeal is the first opportunity that any party has had of seeking to correct this error and, if CPR 52.13 were interpreted too stringently in this situation, there would be no right of appeal at all in these circumstances.

However, for the reasons given above, I would dismiss the appeal.

I agree with the judgments of Arden and Maurice Kay LJJ. However I also wish to add some words of my own.

The Judge reversed the Hearing Officer on the Art. 4(1)(b) (confusion) point because he considered that there was no evidence to support his conclusion of a likelihood of confusion (judgment [108]). With respect I disagree. It is true the survey evidence was rejected, but there was other evidence from which confusion could be inferred. That evidence can be very shortly summarised:

It seems to me to be an entirely reasonable inference from that evidence that an average consumer would think “Oh, Direct Line now also do their business on the internet.” And most certainly it cannot be said that such an inference is so unreasonable that no tribunal could properly draw it. It matters not that witnesses did not assert this sort of case. If they had their evidence would have been of little weight.

That, as it seems to me, is an end of the case. For if an Art. 4(1)(b) case is made out, an Art.4(3) case is bound to succeed. Where there is confusion there is both unfair advantage and detriment to the distinctive character of the registered mark. I do not therefore consider it necessary to consider the Judge’s reasoning under Art. 4(3) and say no more than that I express no opinion as to whether he was right or wrong.

This is a case which has suffered greatly from over elaboration in both evidence and argument. A long trawl through ECJ cases, as happened here, can give rise to the danger that one cannot see the wood for the trees. The Judge’s attempt to analyse what is essentially a question of fact into “a threshold,” albeit low test, followed by a further consideration of the position seems to me to complicate things unnecessarily. It is all a question of fact and degree and no more.

It will be noted that in my summary of the relevant evidence I have not referred to the “evidence” of the branding expert Mr Blackett. This was simply not of assistance. For instance he said in his first report:

In my capacity as an expert on branding I think the Direct Line Telephone Device is both striking and original.

It is my opinion that the Direct Line Telephone Device is now very well known and has achieved iconic status.

Well you do not need an “expert” to tell you any of that. The facts speak for themselves. And if that had not been so, then an assertion to the contrary would have been wrong.

In essence Mr Blackett’s “evidence” consisted essentially of a series of assertions of fact, including an assertion about the ultimate question, namely that which the court had to decide:

It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business.

His reasons for the assertion are simply argument. I repeat the whole of it as set out in his first report so its essentially assertive nature can be seen – and so as a guide as to what should be avoided in future cases:

“It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business. The use by esure of an object of a similar oblong, block-like shape, also on chunky wheels – which up to this time have been the ‘property’ of Direct Line – would lead a significant number of the public to think that the esure mouse on wheels was some how connected with Direct Line, particularly as both companies are involved in insurance. The fact that the esure mouse on wheels is also a desk top object could increase the confusion which I believe will arise. Confusion is especially likely to arise in the case of the esure mouse on wheels if used in the colour red, as at appendix 4 (“the red esure mouse on wheels”), as the colour red has also in my view become the ‘property’ of Direct Line and a major component of the Direct Line Telephone Device. It is not uncommon for companies to extend their brands to embrace new products and services using their well established brand device, or create similar devices as a ‘family’ of related devices. It is my opinion that the use by anyone, including esure, of a device similar to the Direct Line Telephone Device, such as the esure mouse on wheels, would cause confusion among members of the public.”

It is, of course, permissible for an expert to opine on the ultimate question if it is one of fact, not law, as I said in my judgment (with the concurrence of the other members of the Court) in Rockwater v Coflexip, [2004] EWCA Civ 381, [2004] RPC 46. I repeat part of it here:

[13] But it also is permissible for an expert witness to opine on an “ultimate question” which is not one of law. I so held in Routestone Ltd v Minories Finance Ltd [1997] B.C.C. 180 and see s.3 of the Civil Evidence Act 1972.

[14] But just because the opinion is admissible, it by no means follows that the court must follow it. On its own (unless uncontested) it would be ‘a mere bit of empty rhetoric’ Wigmore, Evidence (Chadbourn rev) para.1920. What really matters in most cases is the reasons given for the opinion. As a practical matter a well-constructed expert's report containing opinion evidence sets out the opinion and the reasons for it. If the reasons stand up the opinion does, if not, not.

Assertions of the sort I have set out seem to me to fall within that vivid phrase, “empty rhetoric” and are of no value.

There is another objection to this evidence. I do not think it is expert evidence at all. Mr Blackett’s experience is “brand development, brand management and brand evaluation.” None of these makes him an expert on confusion between trade marks, if indeed there can be such an expert, which I doubt. Actually I suspect a reasonably experienced Chancery judge would have more experience of that.

Finally I entirely endorse what Arden LJ has said about opinion polls. I would only add that even where the practice has been followed, so that the questions and methodology are settled with the agreement of the court in advance, it may be that things will go wrong. Experience of polls shows that they can be conducted in a slipshod manner, so one would need to examine the detail. And even the unexpected can happen – a question which one thought in advance was clear, may turn out not to have been so when the poll has been conducted. And a question which one thought was non-leading, may turn out to be so or to have caused the pollees to speculate in a way which they would not have done but for the question itself.

I agree with both judgments but I, too, wish to add something on the subject of expert evidence.

Like Jacob LJ, I do not consider the evidence of Mr Blackett on the question of confusion to be expert evidence at all. There have been many attempts to define the scope of expert evidence. The authorities were carefully considered by Evans-Lombe J in Barings PLC (in liquidation) v Coopers & Lybrand [2001] EWHC Ch 17. He concluded (at paragraph 45) that they establish the following propositions:

“… expert evidence is admissible under section 3 of the Civil Evidence Act 1972 in any case where the Court accepts that there exists a recognised expertise governed by recognised standards and rules of conduct capable of influencing the Court’s decision on any of the issues which it has to decide and the witness to be called satisfies the Court that he has a sufficient familiarity with and knowledge of the expertise in question to render his opinion potentially of value in resolving any of those issues. Evidence meeting this test can still be excluded by the Court if the Court takes the view that calling it will not be helpful to the Court in resolving any issue in the case justly. Such evidence will not be helpful where the issue to be decided is one of law or is otherwise one on which the Court is able to come to a fully informed decision without hearing such evidence.”

It seems to me that, on any view, the evidence of Mr Blackett on confusion, viewed from the standpoint of the average consumer, does not reach the level of expert evidence as there explained.

Barings was concerned with the relatively sophisticated context of recognised standards in relation to the managers of investment banks. However, it sometimes happens that a form of “expertise” takes hold in more mundane areas of litigation. It remains incumbent on the court to ensure that, if it is to be received at all, it is kept within the limits referred to in Barings. In Liddellv Middleton [1996] PIQR p36, the Court of Appeal considered the recent proliferation of expert witnesses in road traffic cases. Stuart Smith LJ, with whom Peter Gibson and Hutchinson LJJ emphatically agreed, said (at pages p41-p44):

“An expert is only qualified to give evidence on a relevant matter if his knowledge and expertise relate to a matter which is outside the knowledge and experience of a layman …

We do not have trial by expert in this country: we have trial by judge. In my judgment, the expert witnesses contributed nothing to the trial in this case except expense …

There has been a regrettable tendency in recent years in personal injury cases … for parties to enlist the services of experts whether they are necessary or not.”

That was said before the Civil Procedure Rules. It was directed at encouraging a sceptical approach to the taxation of costs when a proffered expert had given evidence which did not go outside the knowledge and experience of a layman or a trial judge. It had an immediate effect on the extent to which, and the purposes for which, witnesses such as accident investigators were used. It is to be hoped that this case will have a similar effect as regards the evidence of branding consultants and the like on the issue of confusion from the standpoint of the average consumer.

Where litigation is commenced in the ordinary courts, the calling of expert evidence is now controlled by CPR 35.1. As I understand it, that does not apply to proceedings before a hearing officer in the Trade Marks Registry. Perhaps it should. However, even without its express application, it must be open to the Trade Marks Registry to control the nature and quality of evidence sought to be adduced before it as expert evidence. It should be encouraged to ensure that the sort of evidence that has attracted the disapproval of all three members of this court is excluded. In a case such as this, neither a hearing officer nor a judge in the Chancery Division requires the assistance of an “expert” when evaluating the likelihood of confusion from the standpoint of the average consumer.