Royal Courts of Justice
Strand, London, WC2A 2LL
Before :
HIS HONOUR JUDGE RICHARD HAVERY Q.C.
Between :
(1) ELLERMAN INVESTMENTS LIMITED (2) THE RITZ HOTEL CASINO LIMITED | Claimants |
- and - | |
(2) ELIZABETH C-VANCI EDUARDO C-VANCI | Defendants |
Ms. Helyn Mensah (instructed by Ashurst) for the Claimants.
The Second Defendantin person and for the First Defendant.
Hearing date: 14th June 2006
Judgment
Judge Richard Havery Q.C. :
This is an application on the part of the claimants for summary judgment under Part 24 of the Civil Procedure Rules. The claimants seek to restrain the defendants from infringing the claimants' trade marks in the word "RITZ".
The claimants are English Companies based in London. The first claimant is the owner, via its wholly-owned subsidiary The Ritz Hotel (London) Ltd., of the Ritz Hotel in Piccadilly. The first claimant is the proprietor of numerous trade mark registrations incorporating or consisting of the name RITZ, including RITZ LONDON, RITZ CLUB and RITZ CASINO, and in particular the registered marks relied upon in these proceedings, namely:
UK Registered Trade Mark No. 1509163 for RITZ registered as of 10th August 1992 for "Gaming services, all included in class 41"; and
European Community Trade Mark No. 1703974 for RITZ registered as of 5th June 2000 for (inter alia) the "provision of gaming services accessed via local and world-wide computer networks".
Class 41 at the material time (and subsequently) is expressed to relate to "Education; providing of training; entertainment; sporting and cultural activities". In a list of topics covered it includes gaming.
The second claimant is the 75%-owned subsidiary of the first claimant. It operates a casino known as the Ritz Club first opened in 1978 in the former ballroom of the Ritz Hotel. The second claimant is the exclusive licensee of the first claimant in relation to the provision of gaming services at the Ritz Club under and by reference to the various Ritz trade marks mentioned above.
In 2002, the first claimant additionally launched a website called Ritz Online providing online gaming accessed via the domain names "ritzclublondon.com" and "ritzclublondon.co.uk".
The defendants are private individuals resident in the United Kingdom. In early October 2005, the claimants, through a monitoring service, became aware that the first defendant had registered, under internet procedures, the domain name "ritzpoker.net" as of 19th August 2005 and was using it to point to a website entitled RoyalPlaza.Net. That website related to gambling with specific reference to Blackjack, Poker, Craps and Baccarat. It contained information about gaming and it contained links to third party sites including sites named Pacific Poker, Party Poker and Poker Room. There was a dispute whether it contained links to gaming sites. The defendants' case was that they were simply concerned with supplying comprehensive and impartial information about poker and that they were not directly concerned with or linked to gaming sites. Mr. C-Vanci gave evidence that the defendants were divorced from any gambling activity whatever. They did not allow any third party related advertising. They did not offer any downloads of gambling games other than for academic, fun or educational use. It is abundantly clear, however, on the evidence that Pacific Poker, Party Poker and Poker Room were portals with links to gaming sites. By "links", I mean that one can click on the visual representation of that site and then be automatically directed to that site on which one can then game. Indeed, Mr. C-Vanci said in evidence that the fact that some links might go to competitors of the claimants was obvious.
On 17th November 2005, following two letters of complaint from the claimants' solicitors dated 14th and 31st October 2005, the defendants registered five further domain names without the claimants' consent, namely (a) ritzypoker.co.uk, (b) ritzypoker.net, (c) ritzpoker.org, (d) ritzpoker.info, and (e) ritzpoker.biz. On 18th November 2005, these proceedings were started.
On or after 17th November 2005 the defendants further configured the internet addresses associated with each of the aforesaid domain names, including the first registered domain "ritzpoker.net", so that all of them pointed to a new website entitled RitzPoker. That contained links, as in the case of RoyalPlaza.Net, to Pacific Poker, Party Poker and Poker Room.
Ms. Mensah submitted that the case fell within Article 5(1)(a) of the European Trade Marks Directive, Article 95 EC. Alternatively, it fell within Article 5(1)(b). Article 5(1) reads as follows:
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:
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;
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.
As to the meaning of "identical" in paragraph (a), Ms. Mensah referred me to the decision of the European Court in LTJ Diffusion v. Sadas [2003] ETMR 83 at paragraph 54:
.....a sign is identical with a trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.
In order to make the requisite comparison, it was necessary, submitted Ms. Mensah, to identify the defendant's sign. She referred me to the judgment of Jacob L.J. in Reed Executive PLC v. Reed Business Information Ltd. [2004] EWCA Civ 159; [2004] RPC 40. The effect of what Jacob L.J. said in paragraph 37 of that judgment is that where the defendant's sign consists of the claimant's mark with added words which are wholly and specifically descriptive, really adding nothing at all, it may be that the average user would not regard them as part of the name. Jacob L.J. gave the example of Palmolive Soap as the sign and Palmolive as the mark. Ms. Mensah submitted that the defendant's sign in the present case was simply "Ritz". The word "Poker" in the combination "Ritz Poker" was wholly and specifically descriptive of the defendants' RitzPoker website, which was devoted exclusively to poker gaming.
Jacob L.J., ib., said:
Putting it another way, I do not think the additional words "Business Information" would "go unnoticed by the average consumer". In all uses of the phrase complained of they are as prominent as the word "Reed" [the mark].
Ms. Mensah submitted that in the context the word "poker" was wholly devoid of any trade mark significance and was therefore unlikely to be perceived by the average consumer as an identifier. Rather, it was the distinctive element "Ritz" which acted as a trade mark and which was likely to be perceived and recalled as such by members of the public. In my judgment, Ms. Mensah there elided two concepts, possibly in reliance on the expression "putting it another way". In my judgment, the word "poker" is not wholly or specifically descriptive in such a way as to add nothing at all to the word "Ritz". The sign is indeed Ritzpoker. Moreover, the word "poker" is not so insignificant that it might go unnoticed by an average consumer. Thus I do not accept the claimants' argument under Article 5(1)(a) in relation to ritzpoker.net. The same applies to the five other signs mentioned in paragraph 6 above.
In considering the question whether Article 5(1)(b) applies, I have to consider the likelihood of confusion. Ms. Mensah distilled some propositions out of the following authorities: Sabal BV v. Puma Agreement [1998] RPC 199; Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc. [1999] RPC 117; Lloyd Schufabrik Meyer & Co GmbH v. Klijsen Handel BV [2000] FSR 77 and Marca Mode CV v. Adidas AG [2000] ETMR 561. Those propositions which I have found of particular assistance are the following:
the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
the matter must be judged through the eyes of the average consumer of the services in issue who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind;
the similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components;
the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of use, enjoy a broader protection [sc. confusion will be more readily inferred];
the factors to be taken into account on a global assessment are interdependent. Accordingly, a lesser degree of similarity between a mark and a sign may be offset by a greater similarity between the services and vice versa;
if the association between the mark and the sign causes the public to believe wrongly that the respective [services] come from the same or economically linked undertakings, there is a likelihood of confusion.
The particular relevance of proposition (g) here is the implication that similarity of the services is a relevant consideration.
I consider first the question of similarity of services. I have mentioned in paragraph 5 above the fact that the defendants contend that their signs are not related directly to the provision of gaming services. Nevertheless, having regard to the cogent evidence that is before me, I conclude that there is no real prospect of the court at a trial of the action finding otherwise than that the defendants' relevant services relate closely to the provision of gaming services similar to those provided by Ritz Online, though probably without the luxury and elegance mentioned below.
Mr. C-Vanci adduced a copy of a letter dated 16th March 2006 sent from the TMClassification department of the Patent Office to his wife, the first defendant. The material part of that letter reads as follows:
According to the dictionary definition 'gaming' is the equivalent of gambling, i.e. a 'gaming house' is a 'place frequented for gambling' and a 'gaming table' is 'a table used for gambling' (Oxford dict.). Gaming is given this same meaning when it appears in a description of services in a trade mark application. In consequence, gaming services in class 41 would cover only the actual gambling activity.
Thus, contended Mr. C-Vanci, the claimants' trade mark no. 1509163 covered only gambling itself, not services relating to gambling. I asked him what question had been put which had given rise to the letter. He said that the question referred to trade mark no. 1509163, and was:
In relation to a company that has registered for gaming services, what would that actually mean? What is the trade mark classification of "gaming services"? What coverage would they have?
Notwithstanding its wording, I can only suppose that the last sentence quoted above from the letter was directed, in the writer's mind, to the word "gaming" rather than to the word "services".
A witness statement of Mr. Ian Crichton Starr, a partner in Ashurst, the claimants' solicitors, includes the following evidence:
The Ritz Club Online offers a range of online gaming facilities including table games such as Roulette and card games such as Poker and Baccarat.....It aims to replicate, in an online environment, the services provided by the second claimant at the Ritz Club. It therefore enjoys the same qualities of luxury, high quality and elegance. It is available to users in many countries around the world, including the UK. The Ritz Club Online not only offers the facilities to play the games concerned, but provides information on each game, explains the rules for each game and gives references to further reading on the games.....the Ritz Club Online incorporates and uses throughout its pages the Ritz trade marks (together with other trade marks also owned by the claimants, such as "RITZ CLUB" and THE RITZ LION logo), all in connection with "gaming services" and "gaming services accessed via local and worldwide computer networks".
Mr. Starr exhibited figures which showed in relation to Ritz Club London Online annual sterling turnover figures in nine digits and substantial marketing and promotional expenditure. He went on:
Since its launch in 2002, the Ritz Club Online website has been very successful and a significant reputation and substantial goodwill has accrued in relation to the Ritz trade marks in relation to online gaming.....Accordingly, a very substantial and valuable reputation and goodwill has accrued in relation to the Ritz trade marks, and the claimants' gaming businesses, in connection with all aspects of "gaming services", whether it be the gambling activity itself, information about the games or other services relating to gaming and whether online or land-based. As a result, the Ritz trade marks are very well known for the provision of services relating to gaming activities, both online and at the Ritz Club. There is no other legitimate user of the Ritz trade marks in connection with gaming services in the UK.
In my judgment, there is no real prospect of that evidence being gainsaid to any significant extent at trial.
The above evidence is relevant to propositions (f) and (h) set out in paragraph 11 above. The Ritz mark has a highly distinctive character because of its use, and accordingly confusion between it and the defendants' signs in question is the more readily to be inferred. And in my judgment the public are likely to associate the mark and the signs in their minds. Whilst such association is, in isolation, irrelevant, it is in my judgment likely to cause the public to believe wrongly that the respective services come from the same, or economically linked, undertakings.
In my judgment, there is a substantial degree of similarity between Ritz and ritzpoker (or ritzpoker.net, etc.) and a rather less substantial degree of similarity between Ritz and ritzypoker (or ritzypoker.net, etc.). The Ritz Online services and the services accessed by the defendants' websites in question are substantially similar. Taking all the aforesaid considerations into account, I conclude that there is no real prospect that the claimants would fail to establish at trial that there exists a likelihood of confusion on the part of the public between the claimants' marks and the defendants' signs arising out of the similarity between the marks and the signs and the services to which they respectively relate.
The defendants observe that the claimants offer no evidence of confusion. It is true that no evidence of specific instances of confusion is before me. But such evidence is not necessary in order to establish the claimants' case.
The defendants also raised the point that the defendants' logo bears no resemblance to the claimants' trade mark or logos. But the Ritz trade mark being a word mark, the claimants placed no reliance on any such resemblance.
There will be summary judgment against the defendants. I shall hear submissions on the form of the order.