Lloyd's & Anor v Lloyds Publishing Group Ltd (Rev 1)

I am afraid this may take some time. This is the claimant’s application for summary judgment on claims for trademark infringement and passing off against the defendant, and to dismiss the defendant’s claim for partial invalidity of some of the first claimant’s registered trademarks and community trademarks.

The first claimant is Lloyd’s, the well-known insurance business, spelt (as is common knowledge) with an apostrophe S. The second claimant is Informa UK Ltd, whose position I will explain in due course. The defendant is called Lloyds Publishing Group Limited, Lloyds being spelt without an apostrophe S.

The names and marks on the claimant’s side are Lloyd’s and Lloyd’s List, with apostrophes in them, and on the defendant’s side, apart from its name, Lloyds Publishing Group Limited, it uses the words Lloyds without an apostrophe and Lloyds Publishing without an apostrophe, but in both cases in the plural.

The claim form was issued on 9 November 2007 and was served on 20 November and at the same time lengthy Particulars of Claim were served. The defence and counter-claim were served on 17 January this year. The application notice of summary judgment together with supporting evidence was served on 7 February. The defendant has been legally advised; although not having solicitors it has had assistance from a Mr Vaughan, who describes himself as a legal assistant. It has also directly instructed counsel, who drafted the defence and counter claim. There are no solicitors on the record. I should mention that the Particulars of Claim are detailed in the sense that they identify each of the complaints which the claimants make rather than making general allegations to be fleshed out in further information and evidence. Accordingly, in a moment, I propose to go through the Particulars of Claim referring, where necessary, to the supporting evidence. In that way I believe that the whole of the claimant’s case will be dealt with.

The defendant has not been legally represented before me; instead Mr Nadim Casim appears to represent the defendant. He is the sole director and controlling shareholder of the defendant, indeed, he may be the only shareholder. I gave permission for him to represent the defendant. He was assisted for part of the hearing by a gentlemen who I think was Mr Bourne (but nothing turns on that) as a McKenzie friend. The claimants appear by Ms Carboni as counsel, instructed by in-house solicitors from each of the claimants. The application is supported by a number of witness statements, to which I will refer. The majority of this evidence was served with the application notice. Evidence in reply has been served but this was not until 25 April. It is in the form of a witness statement from Mr Casim dated 10 April, with some supporting exhibits.

I remind myself of the principles applicable to summary judgment which are helpfully and clearly set out in Ms Carboni’s skeleton argument. The leading authority in this area is now Three Rivers District Council v the Bank of England number 3, [2001] 2 All ER 513 and the procedure enables the court to dispose of issues, which do not need full investigation at trial, as part of its duty of active case management.

In the present case, to succeed on all fronts, the claimants would need to persuade me that the defendant has no real prospect of successfully defending any of the claims of trademark infringement or of passing off or of succeeding on its counter claim for invalidity of the marks in question, and that there is no other compelling reason why any of these claims or counter claims should be disposed of at trial. That appears from CPR 24.2. However, it is not necessary for the claimants to succeed on all fronts in order to achieve the result that they want, which is an order that the defendant ceases trading under the name Lloyds and submits to an inquiry as to damages or an account of profits as well as ancillary relief. This is because, according to Ms Carboni, success on any of the claims for trademark infringement or passing off should lead to the relief claimed. She says that in some cases, the judge is making an assessment not conducting a trial or fact-finding exercise. The court has to make an overall assessment of the claim or issue. That appears particularly from the speech of Lord Hobhouse in Three Rivers District Council & Ors v Bank of England [2001] 2 All ER. I rather think that Lord Hobhouse would regard or would have regarded a summary judgment application that lasted more than a couple or so hours as being inappropriate for that head of relief. I do not believe that that is the approach of the courts or should be the approach of the courts. This hearing took a full day in front of me; I do not think it was inappropriate for a hearing to take that long in the light of the facts of this case and I do not, in any way, criticise anyone for it being more than a couple of hours.

It is not the case, however, that the court has to accept without analysis everything said by a party in his statement before the court. If it is clear that there is no real substance in factual assertions made, then issues that are dependent on those factual assertions can be dealt with at the early stage. If support for that is needed it will be found in ED & F Man Liquid Products Ltd v Patel [2003] EWCA Civ 472. Similarly, there are cases where it is clear, as a matter of law, that even if a party were to succeed in proving everything he alleges, he will not succeed at trial; a trial is a waste of time and money in such circumstances. One finds reference to the well-known test of whether a claim prospects of success are fanciful in Swain v Hillman & Anor [2001] 1 All ER 91 and once it is apparent that the hopelessness of the claim is seen, it should not be permitted to proceed any further.

I think it is also helpful, before looking at the facts, to set out the legal matrix in which the issues arise, that is to say, trademark infringement and passing off. Although, as will be seen, the trademark claims relate to sections 10.1, 2(a) and (b) and 3 of the Trademarks Act 1994 and corresponding articles in the community legislation, it is only sections 10.2(b) and 3 and article 9.1(b) and (c) which are relied on in this application. I am not going to read those sections and articles out in this oral judgment which is already, I am afraid, going to be very long, but they should be read into this judgment at this stage. Nor do I propose to go into the detail of section 10.2(b) since, on the facts, I do not consider that the case for infringement based on that section is suitable for summary judgment. I think there is enough uncertainty about the similarity of goods or services issue to decline to grant summary judgment by reference to that provision.

As to section 10.3, this reads that a person infringes a registered trademark if he uses, in the course of trade in relation to good and services, a sign which is identical with or similar to the trademark where the trademark has a reputation in the Kingdom and the use of the sign being without due cause in the United Kingdom takes unfair advantage of or is detrimental to the distinctive character or repute of the trademark. In relation to similarity, it does not have to be shown that there is a risk of confusion in the context of section 10.3, although that will be sufficient. It is enough if the relevant section of the public, in this case consumers of publications in the Lloyd’s Market and of the consumers who purchase the defendant’s publications, establishes a link between the defendant’s sign and the claimants’ marks. Although there is a debate about the extent of the necessary link which has to be established, and whether it has to be such as to have an effect on the economic behaviour of the customer, in the present case such debate is unnecessary since the evidence establishes a strong link between the defendant’s customers and the Lloyd’s and Lloyd’s List trademark; but that will become clearer when I have looked at the facts.

In relation to unfair advantage:

“It is established that unfair advantage has been taken of the distinctive character or the repute of the earlier mark where there is clear exploitation and free-riding on the coat-tails of a famous mark or an attempt to trade upon its reputation.”

Those words are taken from the decision of the European Court in Antarctica SRL v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-47/06) [2007]. It is a long judgment but I refer, without reading, to the heading, “Unfair Advantage Taken of or Detriment caused to the Distinctive Character of the Reputable Mark NASDAQ”, in paragraphs 53 to 56 of the decision of the court.

As to due cause, in section 10.3, it is for the defendant to show due cause for its adoption of the Lloyd’s mark in its business. I shall come to its explanation later in this judgment, but it seems to be based on the use by a selection of companies of the name, Lloyd, Lloyd’s, in their business names, and I shall examine that aspect further.

Finally, in the legal matrix, there is the question of passing off. It is not necessary to give, and I am not going to embark upon, an exegesis of the law of passing off; I need only to remark that the guidance given by the Antarctica SRL v Office for Harmonisation in the Internal Market, establishes three principal propositions: (a) that for a claimant to establish a claim for passing off it must show that its goods and services have acquired a goodwill in the market and are known by some distinguishing main mark or other indicia, (b) that there is a misrepresentation, importantly, whether or not intentional, leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant and thirdly (c) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by that misrepresentation.

The evidence establishes without challenge (except where I comment otherwise) the following matters, but first I need to say something about the parties. Lloyd’s is the well-known society of Lloyd’s, the society of underwriters providing insurance cover in the world’s leading insurance markets. One hardly needs evidence of that although it is, for completeness, provided in the witness statements. Informa UK Limited, the second claimant, is part of the Informa Publishing Group which is a well-known supplier of specialist information to the global, academic and scientific professional and commercial markets through publishing and events such as conferences. The defendant is a small independent company; I have already stated Mr Casim’s involvement in the relevant businesses. Part of Lloyd’s businesses involves a network of agents known as the Lloyd’s Agency Network. This is an extensive worldwide network of port-based freelance contractors, Lloyd’s agents, who provide independent surveying and claims adjusting services to insurers and other commercial clients, as well as providing Lloyd’s MIU, which I will mention in more detail in a moment, with extensive intelligence information about vessel movements, port information and marine loss adjustment. It is that aspect of Lloyd’s business which is most relevant to the present application.

So far as it concerns Informa, the aspect of Informa’s business that is most relevant to the claim can be referred to collectively as the Lloyd’s Publishing Business which includes, as Ms Carboni describes it (and I readily accept), the famous Lloyd’s List newspaper as well as spin-off publications, conferences and training events under the same brand name. There is also a business division know as Lloyd’s Marine Intelligence Unit, or Lloyd’s MIU, which is the world’s largest provide of maritime data through an online maritime information database and numerous printed publications. Lloyd’s MIU also generates significant revenues from data feeds, consultancy, classified advertising in its directories and display advertising in its directories and magazines, all focussing on the maritime and transport sectors. All of these activities are conducted under the Lloyd’s name and some by reference to Lloyd’s List.

The Lloyd’s Publishing business originated at Lloyd’s. It was subject to a management buyout in 1995 and was merged into the Informa Group in 1998. Lloyd’s owns various United Kingdom and community trademark registrations in respect of the name Lloyd’s and Lloyd’s List, are set out in the Particulars of Claim. The second claimant is authorised to use these names and trademarks in connection with the Lloyd’s Publishing business under a trademark licence, which is attached to the Particulars of Claim, that was entered into when the business was sold off by Lloyd’s.

The defendant. This is, as I have described, a small company of which Mr Casim is the sole director and, I think, the sole shareholder. According to its website, if one looks at that, it is described in its welcome page as the Lloyds Publishing Group website; the leading source for the global maritime industry. I misread that; the definitive information source for the global maritime industry. It reveals a database of maritime-related companies containing over 175,000 records divided into a number of market sectors: ports and authorities and terminals, shipping line, logistics, LPD, LGN, FPSO, owners and operators, oil and gas exploration and transportation. Among other activities, the defendant invites companies in the maritime and transport sectors, and others, to subscribe to this database offering, “Lloyd’s Subscription Services” and, “Lloyds Website Directory Listings”, and it sells advertising space on its website, and in publications, described as Lloyds Magazine Supplements. Lloyds is the registered proprietor of a number of trade marks and community trademarks as set out in the Particulars of Claim. For the moment, it is only necessary to state that they comprise the UK trademarks and community trademark words for Lloyd’s and Lloyd’s List and the stylised word mark Lloyd’s. It is appropriate to note that the registered marks are either registered in relation to insurance services or are qualified by the words, “Or relating to insurance”, or, “Or relating to insurance, reinsurance and assurance services”.

The licence was made between Lloyd’s and Lloyd’s of London Press Limited. That company is now the second claimant which, following various name changes is called, as I have mentioned, Informa UK Limited. The Lloyd’s Publishing business was run by the second claimant, then a subsidiary of Lloyd’s, until December 1995 when, as I have mentioned, it was subject to a management buy-out. It was subsequently listed on the London Stock Exchange in April 1998, then named LLP Group plc. In December 1998 the second claimant merged with IDC Group plc to form Informa plc, whose activities I have already mentioned. Since then, the second claimant has been a subsidiary of Informa plc. The licence grants the second claimant certain exclusive and non-exclusive rights to use the Lloyd’s and Lloyd’s List marks on specified publications and/or in relation to certain specified licensed activities.

Clause 7.1(b) deals with Goodwill. LLP (that is now the second claimant) acknowledges that all goodwill generated by use of the trademarks by LLP or any of its subsidiary or any sub-licensee, whether before or after the date of this agreement, shall at all times be deemed to have accrued to Lloyd’s. It is pleaded in the Particulars of Claim and is established on the evidence that, at all material times, Lloyd’s has used the name Lloyd’s as a trading name and as an indication of trade origin in its operations in the insurance market and its conduct of related businesses if it is in the scope of its objects, which are set out in the Lloyd’s Act, 1911. Further Particulars of its activities are set out in paragraph 7 of the Particulars of Claim. They are lengthy, and I do not propose to read them out. They are, however, established as fact on the evidence and are not challenged, although not admitted, by the defendant. Paragraph 7.1, which I will mention, reads that:

“The First Claimant and its predecessors in title have been operating in the insurance industry continuously since 1688.”

The long list of activities which run through from 7.1 to 7.15 (or description of its business) as I have said, are not admitted, but they are not challenged. However, it is not clear to me that all of those activities would fall within the registrations of the trademarks in the light of the qualifying words which I have mentioned. This does not matter much since it is clear that these activities have been carried on, on the evidence, under the name of Lloyd’s, and as part of its business, even if the name has been used in circumstances going beyond the goods or services covered by the registrations. Indeed, the name Lloyd’s was used long before there were trademark registrations in this country.

The first claimant, which is Lloyd’s, advertises and promotes its various businesses via its primary website at the address www.lloyds.com. In 2006 there were over a million and a half visits to this website and over 1.1 million in the first seven months of 2007. The first claimant is the registered owner of over 100 domain names that comprise or incorporate the name Lloyd’s which, as I understand it, is not a possibility on internet sites. Several of these are used by Lloyd’s to direct internet users to the Lloyd’s website, including lloyds.com lloyds.eu and a number of others I will not read out. Lloyd’s is the registrant of the domain name, lloydsagency.com, which is used to direct internet users to the section of the Lloyd’s website that relates to the Lloyd’s Agency Network.

Prior to December 1995, Lloyd’s built up, owned and operated a successful publishing business, which I will call the Lloyd’s Publishing Business, which published, sold and distributed newspapers, journals, books, law reports, other publications, diaries, address books and business gifts all bearing the Lloyd’s trademark, including the following: Lloyd’s List Newspaper which has been continuously published since 1734, the Lloyd’s Law Reports, dating back to 1919, Lloyd’s Maritime and Commercial Law Quarterly dating back to 1974. As part of the Lloyd’s Publishing Business, Lloyd’s also organise conferences, seminars and training programmes and provided conference and event management facilities to the maritime, insurance and legal markets and promoted these events by direct marketing, advertising and telemarketing; all under and by reference to the trademark Lloyd’s and/or Lloyd’s List. The defendant does not plead to these matters; they are all dealt with and established in the claimant’s evidence.

The second claimant’s activities are set out in paragraphs 12 to 27 of the Particulars of Claim. Again, I do not propose to read them into this judgment, but I shall mention some of them briefly. Paragraph 14 pleads:

“… the Second Claimant has continued to operate the Lloyd’s Publishing Business, by: (i) continuing to publish many of the historically established and internationally distributed newspapers, magazines, journals, books and directories listed in Schedule 2 to Annex 1; [later in the Particulars of Claim] (ii) developing new publications; and (iii) running conferences, exhibitions, seminars and training programmes, and by providing marketing services, contract publishing, data and electronic information services and websites to the maritime, transport, logistics, insurance, energy and legal markets, in each case under, and by reference to, the trade marks LLOYD’S and/or LLOYD’s LIST.”

This paragraph is not admitted by the defendant but nor is any alternative case put. The defence, effectively, raises a question of the validity of the marks insofar as they relate to products other than insurance products or services, on the grounds of lack of distinctiveness, but does not plead whether or not the marks are valid. The second claimant has used the marks in the manner alleged in the Particulars of Claim. The Particulars relate to umbrella brands such as Lloyd’s List, applying across many products, product names and web addresses.

It is also interesting to note, as is set out in paragraph 15 of the Particulars of Claim and which is relevant to the reputation, as well as being of inherent interest, is the following:

“The Lloyd’s List brand heritage spans some 273 years and has been an information source for the global maritime market since its launch. As a testament to the contribution of Lloyd’s List to the maritime sector, the National Maritime Museum in Greenwich held a special exhibition to celebrate its 250th anniversary in 1984. This esteemed newspaper, one of the oldest continuously published newspapers in the world, is referenced in numerous books on the history of Lloyd’s and the history of shipping.”

It is also interesting to note paragraph 16 in relation to which the same observations apply; namely that these are not admitted but the unchallenged evidence shows it to be correct, and I quote:

“Lloyd’s List newspaper has a high reputation for authoritative and timely coverage of global shipping, maritime insurance, offshore energy, logistics and global trade and law market sectors delivered via the publication of daily (five times a week) newspaper, its website and associated magazines.”

Paragraphs 17 to 25 are not challenged in any significant way. Summarising them very briefly: in addition to five editions a week and web presence, Lloyd’s List produces a significant number of supplements and publishes the industry’s first ship management magazine, Lloyd’s Ship Manager, as well as Lloyd’s List Maritime Asia. Lloyd’s List editors and journalists are regularly interviewed by mainstream media for their specialist insight; the editorial team alone consists of 40 people, with editorial headquarters based in London, and a network of correspondents. Lloyd’s List services to the global maritime market is distributed into 72 countries; the Guildhall Library in London contains a collection of the largest of Lloyd’s branded titles. There is reference to Lloyd’s List, Lloyd’s Law Report, Lloyd’s Shipping Index, Lloyd’s Casualty Week, Lloyd’s Confidential Index and Lloyd’s Voyage Record; dating back in each for many years.

Since 1994, the second claimant has operated a website which is called the Lloyd’s List Website in the Particulars of Claim at the internet address www.lloydslist.com, through which it disseminates a large amount of material, including breaking daily news, .pdf downloads of daily information or Lloyd’s List magazines, Lloyd’s List of board information, a million archived articles, daily email bulletins, news by market sector and various matters (it goes on), some of which are available free of charge to any visitor to the website and others of which are available to those who register and pay a fee. There is a statement, supported by the evidence, of the visits to the website (to the Lloyd’s List website) which attracted a total of over 800,000 page impressions in March 2006. The lloydslist.com free daily email bulletin has a daily distribution of 12,000-odd email addresses.

It is stated that the second claimant’s business unit known as the Lloyd’s MIU is the world’s largest provider of maritime data publishing. I was interested to note that it gives 32 million ship positions each day on a global merchant fleet of 120,000 ships, and it publishes 20,000 to 30,000 articles and alerts a year on maritime casualty incidents, labour strikes, port congestion, ship detentions and inspection and other matters. And it publishes real-time incident alerts to Lloyd’s and major news wires and all agencies involved in search and rescue, towage and salvage. It contains comprehensive contact details for personnel, head office and sub offices for 200,000 companies in the maritime, transport, logistics and energy sectors; 163,000 of which are shipping companies. That is of some relevance, as will appear later. It produces 13,500 credit reports on maritime and transport companies each year. It contains comprehensive physical and operational data for the 202,800 ports around the world and over 19,000 terminals and port facilities. The registered owner, nominal owner, beneficial owner and manager-operator charterer of the global merchant fleet of 120,000 ships is contained. The corporate structures of over 100,000 maritime companies is contained. The physical characteristics, engine details, vessel, class and birth to death history of the global merchant fleet of 120,000 ships, including contact data for the vessels and its owners, is contained. Various risk profiles are contained.

The Lloyd’s MIU publishes statistical analysis, specialist data, news covering details of all maritime trading and events companies as well as details of their courses and conferences; many different mapping applications. I go through those all very quickly, but one can see that Lloyd’s MIU is an enormously wide-ranging operation containing huge databases. Lloyd’s MIU publishes this data via numerous prints publications or by reference to the name Lloyd’s, some of which have been continuously published for over 100 years, all of which are well established products in the maritime and transport market. It also publishes this data via CD-ROMS and websites, the largest of which I have already mentioned, which receives over 1.3 million page impressions every month mainly from customers paying between £3,000 and £25,000 per year for access to the website. Lloydsmiu.com is the largest maritime information portal in the world. It also generates significant revenues from each of the following services to the maritime and transport sector: data feeds, consultancy, classified advertising in its directories and display advertising in its directories and magazines. At all material times the use by the second claimant of the trademark Lloyd’s and Lloyd’s List have been pursuant to the licence which I have already mentioned.

There is a minor complaint made in relation to the licence that has been redacted. I do not see why there is a complaint about that as it contains what is regarded as confidential commercial information and does not affect the purport of the licence. In any event, the licence is, to some extent, academic because the goodwill and the property in the marks either belongs to the first claimant or the second claimant; they are both here as parties. I do not think there is a dark hole down which the parties’ rights can disappear so that neither of them can assert them.

Paragraphs 28 and 29 of the Particulars of Claim plead the reputation and goodwill as a result of the extensive use of the Lloyd’s and Lloyd’s List marks so that, under paragraph 28, each of the UK trademarks has a reputation in the UK within section 10.3 of the Trademarks Act, and each of the community trademarks has a reputation within the meaning of article 9.1(c) of council regulation. And under paragraph 29 of the Particulars of Claim, as a result of the matters previously pleaded it is said that the first claimant has acquired a substantial reputation of goodwill in relation to the marks, “And in relation to the businesses conducted under and by reference to the marks”. Further, the second claimant has acquired a substantial reputation similarly.

Now those paragraphs are denied and, without prejudice to that denial, the defendant contends that, save in respect of insurance - I feel sure there is the omission of “except” from the pleading which reverses its sense - that the Lloyd’s mark has lost its distinctive character. Reliance is placed on the existence of some 30 organisations associated with the shipping industry which include the name Lloyds or Lloyd’s in their title: I should add Lloyd in the singular to that, although that is not what the defence says. Specific reference is made to Le Lloyd in France and Belgium and De Lloyd in Germany and the Netherlands. I will return to the specific issue of loss of distinction later, although I do remark, at this stage, that neither specific name contains Lloyds or Lloyd’s, but only Lloyd in the singular.

Paragraph 30 of the Particulars of Claim refers to the absence of the apostrophe in Lloyd’s on many occasions in articles and the like. It is accepted by the defendant that that omission is unlikely to affect the perception which individuals would have of the name.

Paragraphs 31 to 34 of the Particulars of Claim set out the defendant’s activities. Paragraph 31 sets out what the claimants knew about the defendant’s business, reliance being placed on the defendant’s website, among other matters. There is no pleading in the defence to this general allegation, but the eight sub-paragraphs under paragraph 31 are dealt with separately.

Paragraph 31.1 refers to an important letter, important because the defendant relies on it heavily in its defence. It is a letter dated 8 June from the defendant’s accountants. It is a reply to a letter dated 27 May 2005 from Lloyd’s to the defendant. The letter from Lloyd’s is addressed to the defendant. It refers to the change of name of the company, the defendant, from its previous name to Lloyds Publishing Group Limited. Lloyd’s point out that:

“You may be aware that the name ‘Lloyd’s’ is an internationally recognised name in the field of insurance with a history of usage dating back over 300 years.

We do not know the purpose for which Lloyds Publishing Group Limited has been incorporated nor the reason for the choice of this particular name. However the use of the name ‘Lloyds’ as part of the company name may give rise to a risk that the public may be confused into believing that there is some connection between this company and Lloyd’s. You should also be aware that Lloyd’s has licensed certain rights to the use of its name to a third party, which publishes various documents using the name ‘Lloyd’s’.

In view of the above, we would be grateful if you could advise us as soon as possible of the nature of Lloyds Publishing Group Limited proposed activities and the reasons for the adoption of this particular name.”

It is signed by Mr Kevin Smith in Lloyd’s legal and compliance department, and he gives a reference at the top of the letter. There is a reply to that letter from Lesser and Company. It is a reply in the sense that it responds, although it does not answer the questions which were asked at the bottom of the letter which I have just read. It is addressed to Lloyd’s at 1 Lime Street, which is where the Lloyd’s letter came from. It is not addressed to Mr Kevin Smith, and no reference is made in Lesser and Co’s letter to Mr Smith, nor is his reference placed on the letter. The unfortunate result of that was that the letter, although it no doubt arrived at Lloyd’s, did not find its way to Mr Smith or anybody else in the Lloyd’s legal and compliance department who was interested in this matter. The letter reads:

“We have been informed by our client that the company does not conduct insurance business nor does it intend to do so. The company is primarily concerned with providing Desktop publishing solutions and services.”

The fact of the matter is that the letter did not come to the attention of those concerned with this matter at Lloyd’s until July 2006 when a second copy was sent to it. Mr Casim relies (as did his counsel in drafting the defence) on this letter because it indicates, they say, that the defendant had no intention to transgress upon Lloyd’s insurance business. What the letter actually says is that the defendant does not conduct insurance business, nor does it intend to do so. Lloyd’s complaint, however, is not that the defendant has ever conducted insurance business - it clearly could not legally do so quite apart from Lloyd’s interest and use of the Lloyd’s name - but that the defendant is passing itself off as Lloyd’s - related by its use of the Lloyd’s name and its infringement of the trademark in doing so. The letter does not address those matters and I do not think that the second part of the letter (the explanation that the company is carrying on desk-top publishing solutions and services) can possibly be taken as an indication that the defendant does not and will not publish material in the same market as the second claimant. At least Mr Casim has now acknowledged expressly in court that this is precisely what the defendant is doing for, as he put it me in his submissions, “The defendant and the second claimant are in direct competition”.

Paragraph 31.2 alleges a web tag. This is operated as a link whereby the defendant’s domain name, www.lloydspg.com lead users to the second claimant’s Lloyd’s List website. This allegation is denied in the defence and Mr Casim has reiterated the defendant’s position in his submissions. The evidence from Mr Espin which suggests that this tagging did take place, is only a report of what he had been told by another person who had actually verified the redirection for himself. The defendant’s own position, when the point was raised, was not a bare denial that there had been such linking but, effectively, an acknowledgement that they did not know the position in the past and only that linking was no longer happening, and one can see that in their letter of 5 May 2006 sent to Lloyd’s lawyers, where it is said in paragraph 3:

“We cannot confirm whether this has occurred in this case, as we simply have no record of it. We confirm that linking, re-direction or tagging is not taking place at this time.”

That turned, from a statement of a lack of knowledge in that letter, into a denial that it happened in the pleading. Mr Casim told me, “I do not know the basis on which the denial is made”. However sceptical I may be about the position, it does seem to me that there was a genuine dispute on this factual issue, which I cannot resolve. I take no account of the allegation in assessing the claimant’s application for summary judgment.

Paragraph 31.3 refers to an email dated 12 July from a Ms Penn, of the defendant, to Ms Andrews, the in-house solicitor for the first claimant, where it was claimed that the defendant had been active for over a year and that its areas of activity included:

“… publishing, graphic design and related services. Market sectors that we cater to and have considerable expertise of are; Ports & Terminals, Shipping, Logistics and Oil & Gas.”

There is no question that that email was, indeed, sent.

Mr Espin has this to say, and this is setting out in paragraph 9 of his witness statement some examples of instances of confusion that had been reported to him in his capacity as managing director of Lloyd’s MIU. The third example is that in September 2006, Janet Wood, a sales agent operating on behalf of the second claimant in Greece, contacted the second claimant in relation to, “Slightly disturbing telephone calls” that she had recently received from two of her customers (whom she names) and Ms Wood stated that a company calling themselves Lloyds “is calling customers to sell advertising space and that they already had their advertising material on file”. She goes on to state that the companies are tempted into “Believing that it is us”, i.e. Lloyd’s List, but in this case the two named clients, “Have called me first”. And there is Ms Baarsma to similar effect. She says that she was telephoned by Mr Gates in April 2006:

“He informed me that as one of his regular customers had pulled out at the last minute he could offer a full colour A4 advertisement for €800.”

She says that she thought Mr Gates was a colleague of Steven Black who worked with the second claimant and that he, Mr Gates, worked for the second claimant. The reason she thought Mr Gates was from the second claimant was because of the name Lloyds, and also the fact that Mr Gates said he had Ceres advertising copy on file, a statement which he confirmed by email. She says that as she had placed advertisements in Lloyd’s List on numerous occasions, this did not surprise her and convinced her that she was dealing with the second claimant:

“Ceres had never placed an advertisement with the defendant and had never sent them any advertising copy, in fact, I had never been in contact with or heard of the defendant prior to the advertisement.”

(Quote unchecked)

As this is of some importance later on, I shall also read paragraph 6:

“After I had placed the advertisement, I tried for several months to obtain from the defendant a hard copy of the supplement in which the advertisement had been placed. It was very hard to make contact with anyone at the defendant. Eventually I was contacted by Lisa Taylor, an employee of the defendant, who said she would look into the matter for me. In response to my email stating, ‘I still have not received that issue of Lloyd’s List which you would send me’, Ms Taylor replied on 15 May stating, ‘Leave it with me. I will check matters this end and get back to you’. At no point did Ms Taylor correct my assumption in relation to Lloyd’s List, so I continued to believe that I was dealing with the second claimant.”

(Quote unchecked)

And she exhibits email correspondence:

“I eventually received the hard copy of the supplement in October 2006. The quality was very poor; it looked like a copy of a copy. The resolution was very bad and the page numbers were incorrect. It was totally different in quality to what I expected from Lloyd’s List. I had been used to receiving professional service from the second claimant and my expectations are high because of this. Following my experience with the defendant I had lost all trust in the second claimant in the Lloyd’s brand. In September 2006 I was contacted by Steven Black in relation to an advertisement. It was only when I asked him about Mr Gates that it was explained to me that the defendant was not connected with the second claimant. I emailed the defendant to complain that they had approached me under false pretences.”

(Quote unchecked)

The email correspondence which she exhibits is quite brief; if I could just go through it. There is an email from Mr Gates on 5 April 2006. He says:

“Further to my conversation with you today [that must be the one that was referred to in Ms Baarsma’s evidence] find enclosed information requested: Lloyds Colour Magazine Supplement, North European Ports, full page April colour inside front cover position, facing contents at a discounted rate of €800. We go to press in around six days time as another one of our European advertisers cannot get their copy to us on time. As mentioned, we are already holding your advertising on file. Please drop me a short email as soon as possible to confirm your involvement. Yours sincerely.”

(Quote unchecked)

And then he gives his web address, email address, and at the bottom it refers to Lloyds Publishing Group Limited, registered office, in 1047, Station Road, London, E4. The response to that was:

“Hi Adrian(?), hereby we confirm our involvement. Can you please send us a .pdf of the ad to refresh our memory?”

(Quote unchecked)

Which was not done, and Mr Gates responds:

“Find attached your ad, low resolution. I suppose that is enough to refresh the memory, but it wasn’t the ad as it went in. You will see that we have rotated it by 90 degrees to fill the space of a full page. Also, please can you return the fax confirmation so that I may secure that position for you.”

(Quote unchecked)

I mention here that this sort of correspondence one sees in a number of other cases, in particular, the mantra somebody has pulled out, so we have this good opportunity and more importantly, the defendant has the advertising copy of the target.

In relation to the recovery of a copy of the advertisement on 25 April 2006 Ms Taylor emailed Ms Baarsma to say:

“Today requested a back issue for you which will normally take ten working days to arrive.”

(Quote unchecked)

There is a reply to that where Ms Baarsma says:

“I still have not received that issue of Lloyd’s List which you would send me.”

(Quote unchecked)

Response to which:

“Leave it with me, I will check the matters and get back to you.”

(Quote unchecked)

So one sees as Ms Baarsma says in her witness statement that the misapprehension she was dealing with Lloyd’s List is not corrected. One might consider it is difficult to think that that was an oversight.

It is to be noted that none of the persons to whom I have referred had been customers of the defendant before. It is clear to my mind that the communications are designed to give the impressions that the client had previously dealt with the person contacting them. It can only be that they intended the recipient to think that they were dealing with Lloyd’s, or at least the publisher of Lloyd’s material. Further, as will be seen, I regard it as fanciful to think that any of these persons had sent copy to the defendant. That copy must have been obtained elsewhere either by scanning (although Mr Casim says that the quality would have been worse if that had been done) or by some other means unknown to me, but nothing to do with the target customer.

The defendant’s representative must surely have known that in targeting a person who was a customer of Lloyd’s that person would understand the contact to have come from Lloyd’s. It is said in the defence that the defendant did not know that these persons were customers of Lloyd’s, but it is certainly the case that they targeted people who were customers of Lloyd’s and must have understood that if they did target such a person there would be confusion.

In 31.5 an email is referred to dated 19 March from Ms Penn to Mr Demery which I have already mentioned, where she claimed that the defendant had over 175,000 firms:

“On its database and online directory which were targeted for marketing campaign and the database was organised into some market sectors.”

(Quote unchecked)

That is admitted.

Paragraph 31.6 says that:

“In March and April 2007 representatives of the defendant sent emails to various ...(reading to the words)... and companies informing them inter alia that the defendant was `the leading information source for the global maritime industry’ and that it operated, `the Lloyd’s online directory’ and invited them to subscribe to the directory service.”

(Quote unchecked)

That is admitted but it is said that this is a mere marketing puff. I will identify the evidence but I do not propose to read it all out. It clearly establishes what is pleaded. See Mr Pederson. Also correspondence from Allied Surveyors and Adjustors Limited and SS Dubai to the first claimant found in volume C, tab 22. Similar material comes from the evidence in the Joergen Eybye, Roger Symes, Vincent de Vos, Patricia Hernadez and Henny Neilson and the exhibits showing the same approach in each case.

What is particularly disturbing to the claimants in all this is that the advertisers think that they are paying only £35 for an advertising entry but having signed an agreement, with small print which they did not read, they find that £1,200 is taken from their credit cards after 90 days because they failed to cancel a premium service to which they have unwittingly signed up to.

I think it is clear that representations that Lloyd’s is the leading information source for the global maritime industry and it is operating the Lloyd’s online directory are not mere puffs. It is fanciful to suggest that they were designed other than to mislead people into thinking that they were being approached by Lloyd’s.

Mr Casim refers me to an email dated 25 May 2007 from Sarah Penn of the defendant complaining about what she says was copying of the defendant’s website by the second claimant.

In that letter (having made that complaint) she says this in paragraph 4:

“Furthermore, our online directory is around 97 times the size of the directory offered by Lloydslist.com in terms of quantity of client listings and subscribers at around 23,000 plus and still growing compared with approximately 200 for Lloydslist.com. As such our online directory is light years ahead of that which is offered by ...(reading to the words).... Group. No doubt ...(reading to the words)... Group is attempting to emulate our success by simulating the features and capabilities of our site’s online directory.”

(Quote unchecked)

Mr Casim echoed that in his submissions to me.

As far as a statement about Lloyd’s own database is concerned that is disputed by the claimants. There is no material evidence from the defendant about the size of its own database or perhaps, more importantly, how it has been compiled and precisely what information it contains. Nor is there any evidence from the defendant about the claimant’s database.

The particular claimant I have already mentioned referred to huge amounts of information which were produced by the claimants. To mention just one item, the second claimant contains comprehensive contact details for personnel, head office and sub-offices for 200,000 companies in the maritime transport, logistics and energy sectors, 163,000 of which are shipping companies. The paragraph I had already read.

The point in the email seems to be that the defendant then had 23,000 subscribers whereas Lloyd’s list had only 200. That figure hardly seems consistent with paragraphs 19 and 21 of the claim which are not challenged in the defence. In any event Lloyd’s List is only part of the story. There are many other publications and complaints made against the use of Lloyd’s not only of Lloyd’s List.

At paragraph 31.7 it is admitted; this pleads that through its website for an unknown period leading up to the start of this action the defendants have offered or purported to offer inter alia the following services:

“Access to a database and directory of 175,000 maritime related companies divided into market sectors. Publication and distribution of a series of special reports which have a circulation of over 25,000 copies sent on a named basis to senior executives and decision makers. Magazine supplements. Publication and distribution of a daily newspaper. An online news flash service. Advertising space. Lloyd’s insight report detailing a company’s performance and discussion forum and blogs.”

(Quote unchecked)

I should have mentioned before going to 31.7 some further material which is recent evidence about the activities of the defendant and I would read certain passages from the second Witness Statement of Mr Espin on 8 May and from Mr Persson also on 13 May. Mr Espin says this:

“Notwithstanding the Defendant’s claims in relation to its limited resources, such limitations do not appear to have hindered its ability to continue the activities complained of by the Claimants. Furthermore, despite objections by the Claimants, not only in relation to the Defendant’s activities generally but also in relation to the specific manner in which the Defendants contacts potential customers which directly results in such customers confusing the Defendant with the Claimants, these activities have continued in exactly the same manner. Rather than taking heed of the evidence that has been filed against them, the Defendant has continued to pass itself off as being the Second Claimant (or connected with it), causing considerable embarrassment and damage in demonstrating a complete disregard for the Claimants’ concerns. Recent examples of the Defendant’s activities which have been brought to my attention in my capacity as managing director of Lloyd’s MIU include the following” [and he sets out three examples which I am not going to read out because I have already read out too much material, but they are there for anyone to see]

He also says in paragraph 7.3 of his second Witness Statement:

“De Lloyd NV is a Dutch company. Its website shows consistent use of De Lloyd and Le Lloyd and never Lloyds or Lloyd’s.”

Mr Casim said that that is true and he referred me to instances where one see Lloyd but that is always in the singular. So one does see Lloyd but not Lloyds or Lloyd’s. Going on:

“It also shows it focuses on Holland and Belgium. Notwithstanding the overlap of the Second Claimants activities in relation to publishing, no instances of confusion have come to light. De Lloyd (based in Antwerp) publishes almost exclusively in Flemish/French [although there is a special report in English as Mr Casim points out] and is a newspaper dedicated to ports and port logistics. They are very much known to the market as De Lloyd or Le Lloyd and not Lloyds or Lloyd’s. De Lloyd has a local rather than international focus on ports whereas the Second Claimant provides information on an international scale right across the complete maritime spectrum. There has been co-existence between De Lloyd and the First and then the Second Claimant for over 100 years, during which time both companies have developed a separate and distinct brand which are both well known in the maritime industry. In addition, the Second Claimant is not aware of any instances of confusion that have arisen as a result of De Lloyd NV’s activities.”

Mr Persson says this:

“5.

The Defendant is continuing to approach my clients in a manner that creates confusion and encourages the belief that individuals approached are dealing with the Second Claimant. Firstly, in relation to the Defendant’s claim that ‘we already hold your advertising copy on file’, this is wholly untrue. I have never at any time sent any advertising copy to the Defendant in any form and I can also confirm that, having checked with my clients that have been approached by the Defendant, those clients have not sent advertising copy to the Defendant either. I believe that this, together with other statements in the emails from the Defendants are designed to confuse potential customers into believing that they are dealing with the Second Claimant, which is a natural assumption that already arises when they see the names ‘Lloyds’ and ‘Lloyds Publishing Group’ in the Defendant’s emails.

6.

In relation to clients that contact me in relation to the Defendant’s offer of advertising, I ask each of them who they think the Defendant is. All of them have confirmed that they thought they had been approached by the Second Claimant. In particular, Mr Jentoft had previously informed me that he was not intending to place any advertising this year and the only reason he contacted me with regard to the offer instigated by the Defendant, was due to the misguided belief that he was dealing with the Second Claimant and would consider advertising with the Second Claimant due to the quality and wide circulation of their publications. Once I had clarified that the Defendant was not connected with either the First or Second Claimant, the offer from the Defendant was rejected by Mr Jentoft.”

Coming to paragraph 32 we find a pleading of the defendant’s use of the sign Lloyd’s in the course of trade in the United Kingdom. There followed two pages of particulars over eight separate subparagraphs. I think it will overburden this judgment if I go through them even in summary form. They are there to read and they are established on the evidence. In any event they are all admitted saying so far it is alleged that the defendant’s activities relate to insurance other than peripherally. It does not offer to ensure that Lloyd’s is not used in relation to insurance.

Paragraph 33 alleges that the use of the sign Lloyd’s has been without the consent of the claimants or either of them. It is admitted that there has been no express consent but it is said that there has been acquiescence or implied consent. That is contained in paragraph 32 of the defence which reads:

“Paragraph 33 is admitted to the extent that at no time did the Claimants given express consent to the Defendant’s use of the name Lloyds. The Defendant maintains that the Claimants have acquiesced, and implicitly consented, to the use of the name Lloyds by the Defendant. The Claimants have been aware of the Defendant’s activities since around June 2005. It has initially indicated to the Defendant disapproval. Subsequently it has not issued any proceedings, until the commencement of this action. Throughout that period the Defendant has invested heavily in an internet presence, marketing infrastructure and corporate identity based on the use of ‘Lloyds Publishing Group’. The Defendant has acquired substantial goodwill of its own in the name Lloyds Publishing Group.”

I comment here that there is no evidence to suggest that the claimants have been aware of the defendant’s activities since around June 2005. At that period all they had was the letter from Lester and Co which I have already mentioned, which does not in any sense describe the activities which the defendant actually carries on.

Paragraphs 34 to 40 of the particulars of claim allege trademark infringement. Reliance being placed on subsections 1, 2(a) and 2(b) and 3 of section 10 and corresponding provisions of the CTMR. For the purposes of this application, as I have said, the claimants rely only on 10(2)(b) and (3) and the corresponding community provisions. Paragraph 34, which is a general allegation of infringement is denied, however, it is admitted in relation to paragraphs 35, 36 and 37 of the Particulars of Claim that in respect of insurance using the words “Lloyds” (without an apostrophe) would be a breach of the relevant marks but it is denied that the defendant has used them for that purpose. This seemed to be an acceptance that the signs which the defendant has used in its trade are identical or similar to the claimants’ registered marks.

Paragraphs 35 and 36 are not directly in point since the claimant did not rely on section 10(1) of Article 91A in this application.

Paragraph 37 pleads likelihood of confusion in relation to section 2(a) and (b) so far as it concerns the UK trademarks. The application relies on only (b).

Paragraph 38 pleads likewise in relation to Article 91B.

I propose to deal with the claims very briefly.

It seems to me that there is real issue about whether the activities of the defendant infringed the claimants’ marks under section 10(2)(b). It is not immediately obvious that the defendant is providing goods or services similar to those within the claimants’ marks, each of which is qualified be reference to insurance services and/or re-insurance services. It seems to me that the defendant’s case on this aspect is not so weak that the claimants should be entitled to summary judgment. I make no comment about the strength of the case although my view may be pretty obvious in the light of what I say about the other aspects.

Paragraph 39 pleads further matters to establish a real likelihood of confusion within section 10(2) and I need to deal with these specifically.

The parties have the pleading. I am not going to read out the particulars of actual confusion set out in paragraphs 1 to 5 in paragraph 39 of the Particulars of Claim but they should be taken as incorporated in this judgment.

There is a general denial subject to more precise particularisation of the subparagraphs. Going to those subparagraphs; Subparagraph (1) deals with the Thrane & Thrane advertisement.

I need, in order to put these pleadings in context to refer to passages from the evidence of the individuals I have already mentioned. The passage from Mr Persson’s evidence I have already read goes to the first of the particulars. Paragraph 2 which deals with Ms Baarsma’s involvement I have already dealt with on the evidence. The same for paragraph 3. The reference in paragraph 4 to Vivian Scheers of URS Corporation who was misled by the defendant into believing that one of the defendant’s representatives and one of the second defendant’s representatives worked for the same organisation, which I will come to.

More broadly the defence at paragraph 37 says this:

“At paragraph 39(1) is denied, subject to the qualification at the end of this paragraph. Thrane & Thrane are communication equipment suppliers who intended advertising with the Defendant and filed copy electronically. The Defendant did not represent to Thinus Svendsen either that he was being asked to advertise in a Lloyd’s List publication or that the Defendant held copy from Thrane & Thrane, prior to its submission to the Defendant in or around March 2006. It is not for the Defendant to positively deny the state of mind of Mr Svendsen and the actual state is not admitted with the proviso that it would not be rational for him to have formed the view imputed to him.”

It is quite beyond my comprehension how the defendant can say that Mr Svendsen was not rational in forming the view he held and it is fanciful in my judgment to suggest that he is not being honest when he says what he does. It is said in the defence that Thrane & Thrane filed copy electronically. That is denied by the client who says he intended to advertise with the second claimant. There is no evidence filed, even to hint at support for this allegation in the defence. Paragraph 38 of the defence enlarges on the proposition that Thrane & Thrane could not have believed that the first claimant would have an address at the actual address of the defendant but this assumes two things. First that Thrane & Thrane had knowledge of London areas and postcodes that were relevant, and secondly, that an entity publishing the publications that the second claimant publishes would not have a registered address in Chingford, or even a place of business in Chingford. I see no reason whatever to think that the first might be true or that the second might not be possible. This defence is wholly fanciful in my judgment.

In relation to the first pleading concerning Ms Baarsma, the defendant denies that she was misled. Again the allegation is that copy was filed. Again there is not a shred of evidence to show that that is true. Her evidence is that she had not advertised with the defendant before and that she was misled into thinking that the defendant was the second claimant. I do not think it would be right to give any credence to the suggestion that copy was filed in the absence of any evidence to support the assertion, especially given her own evidence. I reject without merit the suggestion that her state of belief would not have been rational.

In relation to the second pleading, the supply of the back issue, the correspondence which I have read speaks for itself. The reference to Lloyd’s List was not corrected. There is no evidence and Ms Taylor could explain what she understood from the email. It is inconceivable that had she read the email she could have thought it other than that Ms Baarsma thought she was dealing with Lloyd’s List. That Ms Taylor did nothing to correct the mistakes speaks volumes, I think, in the context of the allegation that the defendant has all along held out has been or been connected with the publisher of the Lloyd’s List. It is clear that she was confused and thought the persons concerned were both from the same organisation. It can only have been a representation from the defendant that created this misapprehension. Of course, there could be an innocent explanation but what happened is at least consistent with her being misled by the defendant’s representatives about the identity of the defendant or its connection with the claimants. I do not, however, attach any weight to this fact as it is not possible to say that the defendant’s case on this example is clearly to be rejected.

As to the fifth particular under paragraph 39, this is that Ms Elspeth Pills of SPW Rotterdam was misled by the defendant into believing that it was selling advertising space in the Netherlands edition of Lloyd’s List magazine. She gives clear evidence about what she was told and what she believed. Paragraph 39.5 is denied only insofar as it imputes any misleading behaviour or misrepresentation to the defendant. However, there is only one possible interpretation of the correspondence and that is that it was designed to mislead and misrepresent the true position.

Paragraph 40 of the Particulars of Claim addresses matters relevant to section 10(3) namely the use by the defendants of the claimants’ marks without due cause, taking unfair advantage of and being detrimental to the character and/or repute of the marks, or being marks with a reputation in the jurisdiction where they are registered. This was in breach of section 10(3) and Article 91C.

Particulars of lack of due cause, of unfair advantage and of detriment are given in a total of 16 subparagraphs. I should touch on them briefly.

The first is prior to a document named Lloyds as part of the defendant’s corporate name, trading name, domain name and web address. The defendant had no legitimate prior interest in the name Lloyds. It is admitted by the defendant that it had no legitimate interest in the name Lloyds to the extent that there was no specific link between the defendant and that name. It is denied, however, that the defendant had no legitimate reason to use the name Lloyds although nowhere in the pleadings, evidence or correspondence is it explained what those legitimate reasons were.

Secondly, as a member of the business community of the United Kingdom the defendant cannot fail to have been aware of the first claimant and its business given the extent of its reputation. Similarly for the second defendant. Much of that paragraph is admitted although Mr Casim says he was not aware of the separate corporate identity of the second claimant. Nor did he assume any link between the first claimant and Lloyd’s List Publications. It is repeated that Lloyd’s is an appellation very commonly used in the commercial and banking world, most uses not being licensed by the claimants. I will again return to this aspect which is part and parcel on the attack based on lack of distinctiveness.

The third element, as the defendant well knew the reputation of the claimant’s activities under the trademark Lloyd’s and Lloyd’s List et cetera with such that the adoption and use by the defendant of the names Lloyds, Lloyds Publishing and Lloyds Publishing Group make it inevitable that the defendant’s business would be seen as having a connection. The defendant’s repeated use of the name Lloyd’s on its own in connection with services that are the same as or similar to those of either or both of the claimants and directed at customers who are the same or similar to those of either or both of the claimants makes it particularly likely that such connection will be made.

The defence seems to be directed at the likelihood of confusion, but this paragraph of the particulars of claim is directed at lack of due cause. The allegation that a customer would make a connection between the claimants and the defendant is not quite the same as the likelihood of confusion. What is being said in the Particulars of Claim is that in the light of the allegedly obvious perception of connection it is even clearer that there is a lack of cause for adopting the name Lloyd’s.

The fourth is that in correspondence with each of the claimants the defendant failed to disclose the true effect and nature of its activities. As to failure to disclose the true nature and effect and extent of the business I think that it is an incontrovertible fact in the sense that there was no positive disclosure by the defendant. But it is equally true, as the defendant says in its defence, that the claimants could have ascertained the position through looking at the defendant’s website. This is of marginal relevance in my judgment in the context of lack of due cause and I attach no weight to it.

As to the fifth matter. Inquiries conducted on behalf of the first claimant in June and July 2007 indicate that the services that are provided by the defendant are unavailable and will fall short of claims made on the defendant’s website (and some particulars are given).

It is said that the defendant has made some responses which, although perhaps implausible, are not ones which can simply be disregarded. This is again another aspect of the due cause head that I attach no weight to.

Paragraph 6, despite having given notice of the claimant’s respective rights and interest the defendants nevertheless continued to use and expanded the use of the signs Lloyd, Lloyds Publishing, Lloyds Publishing Group in its business. That is admitted. The defendant says it is entitled to use the signs except in relation to insurance. Unfortunately for the defendant, as the evidence shows, from Mr Persson in particular, even after warning of the claimant’s right the defendant has continued not only to use the names but to do so in the misleading way which I have indicated from the view of the email correspondence.

The particulars of unfair advantage are contained in paragraph 7 to 11 of paragraph 40, and the responses contained in the defence do not seriously challenge the particulars which are given, if that seems obviously correct. This is accordingly a case where the defendant has gone into a market in competition with the claimants in circumstances where the claimants have an established reputation by reference to, and goodwill in, their marks and yet the defendant has taken this course which it has (that is to say using a similar mark). In doing so there has been such exploitation and free riding on the coattails of the claimants famous marks and an attempt to trade on its reputation as to bring the case within section 10(3) at least in respect of the cast because of the email correspondence with customers, which I have mentioned.

This is a clear case for unfair advantage and the prospect of establishing the contrary is in my judgment fanciful.

Particulars of detriment are given in paragraphs 12 to 16. In summary, the first of those:

“Any person who purchases, subscribes to or uses the Defendants’ goods and services believes them to be linked to those of the Claimants will blame the Claimants for any problem with the quality of such goods or services.”

It is hardly surprising that allegation is made given the history of the customers who I have already dealt with.

That is denied and it is said that the separate identity of the defendant was quite clear to anyone who does business with the defendant and there is no possibility of the claimants being tainted by any customer dissatisfaction. The fact of the matter is that this is precisely what has happened. It is fanciful to think that the claimants will not be able to establish at trial that it has happened.

At subparagraph 13:

“It is likely that such problems will arise.”

Again that is denied and admissions were made as to the standards adhered to by the claimant because it is said each of the claimants has for very many years an experience of providing high quality goods and services under strict policy controls, whereas the defendant has no established track record. Again I think it is fanciful, in the light of the evidence that I have, to think that that will not be established. Such problems have arisen, such problems would clearly arise again as is shown by Mr Persson’s evidence if the defendant continues to use the marketing techniques it does.

There is in the defence a suggestion that if the claimants persist in making the standards of service provided by the first claimant an active feature they will rely on the high profile mismanagement that led to (if I can describe it briefly as) the Lloyd’s scandal and the resulting formation of Equitas. It seems to me that that is a matter wholly irrelevant to the relationship between Lloyd’s and its customers and even less relevant to the relationship between the second claimant, which is now not in the Lloyd’s group, and its customers.

Then it is pleaded that the effect of the defendant’s repeated use of the Lloyd’s name in its business is likely to cause members of the public to associate the defendant’s business with one or both of the claimants’ businesses. Such as the character and the distinctiveness of the trademarks will become lowered. That is denied.

That last point is probably a matter as much for argument as for evidence but what Ms Tumbull says about that is this:

“Even if people do not make the connection between the defendant and either of the claimants the mere fact of having another Lloyd’s on the market in those areas of business conducted by the claimants will lead to a blurring of distinctiveness of the name. No longer will Lloyd’s be associated exclusively with the first claimant or the second claimant, but there will be another Lloyd’s with which to share the right or name.”

(Quote unchecked)

That would seem to be obviously correct but whether that is a sufficient detriment for the purpose of section 10(3) may be a different matter.

One additional factor raised at the hearing was the diversion of business from the claimants to the defendant which would have an obvious economic repercussion. If people are being diverted from being customers of the claimants or entities within their organisations as a result of misleading or use of the Lloyd’s name, then there is an obvious economic consequence.

As to similarity, the evidence clearly establishes, in my judgment, a likelihood of confusion where we are dealing with section 10(2) and the possibility of the defendant establishing to the contrary on the totality of the material I have seen or what one might reasonably think would come forward at a full trial, is, I think, fanciful. But even if that were putting matters too high the relevant section of the public clearly sees a link between Lloyds as used by the defendant, and the claimant’s mark since in my view Ms Carboni has made good her contention that the strong link made by the defendant’s customer with Lloyds and Lloyd’s is undoubtedly having an affect on their economic behaviour. That is both beneficial to the defendant and detrimental to the claimants.

In relation to passing off, the same facts are relied on and the same comments really apply as I have already made. Paragraph 41 of the Particulars of Claim starts the section on passing off. It pleads that my reason of the foregoing:

“… the Defendant has made repeated misrepresentations causing and/or threatening to cause members of the public in the United Kingdom to believe that its goods and services are connected or associated in the course of trade with either or both of the Claimants ...”

It is quite clear from the evidence which I have recited, Mr de Vos, Ms Baarsma, Mr Neilson, Mr Symes, Mr Persson, Mr Eybye and Mr and Ms Hernadez and from Mr Espin’s Witness Statement at paragraph 9 that the defendant was holding itself out as being part of or associated with the second claimant by virtue of its use of the names Lloyds and Lloyds Publishing and Lloyds Publishing Group in the circumstances of the incidents which I have related.

It is also the case from Mr Pedersen’s Witness Statement that some people have interpreted the defendant’s approach as being connected with the De Lloyd’s Agency network which is part of Lloyd’s itself as already explained.

But it does not matter whether it is the first claimant or the second claimant whose rights are being infringed, they are both here as claimants.

Paragraph 42 is really a repetition of the same material but instead of pleading misrepresentation it pleads misappropriation and erosion of the claimant’s respected goodwill in the business conducted under those trades. The defendant is thereby trading off and taking unfair advantage of the goodwill which the claimants have built up through their substantial investment in the trademarked business. That is really material I have already dealt with in relation to section 10(3) and the same observations as I have already made in relation to paragraph 41 apply.

Paragraph 44 says:

“By reason of the foregoing, the Claimants have each suffered loss and damage.”

That is denied, the defendant noting the complete lack of particularisation of damages already suffered by the claimants. It is the case that none is proved. There will in any event if liability is established need to be an inquiry following a summary judgment application as to damages or at the election in relation to the trademark of the claimants for an inquiry as to an account of profit. Damages is more likely to be the relevant remedy and if it is said that it is a matter of law some damage must be established it is obvious, I think, that at least time and expense has been expended in dealing with the complaints that have arisen as a result of the incidents which I have already dealt with fully.

Paragraph 45 pleads that it is apparent from the content of the defendant’s website and from its correspondence that it threatens and intends to continue its acts of trademark infringement of passing off. It is correct that there is a threat to continue to use the website and the Lloyd’s names in the way that the claimant alleges (and any suggestion to the contrary is fanciful). Although I have been making it clear as I go along that there is both infringement of the trademark under section 10(3) and passing off, those conclusions depend thus far on what has happened rather than what will happen. It is central to what has happened that there have been misrepresentations in the approaches to individual customers.

There have also been, as Mr Persson’s recent evidence shows, continuation of the same marketing techniques by the defendant containing those same misrepresentations and unless restrained by injunctive relief I have no doubt that that will continue.

I am not sure if Mr Casim suggests that he did not know what was going on in his marketing teams. I would treat with a great deal of scepticism any suggestion that he did not, especially as I note that the complaints about the £1,200 withdrawals from customers’ credit cards were referred up line in management by the representatives concerned who were told to respond that it was company policy not to forego the charge. From what Mr Casim said to me at the hearing he regards these simply as selling techniques and he did not suggest that they were ones of which he disapproved.

Apart from the matters which I have mentioned and rejected as affording defences to the claim, that there has been passing off and a breach of section 10, there are certain possible defences which have been raised and which need to be considered.

First there is a regular reference by the defendant in its defence, and Mr Casim’s submissions to the fact that the trademark registrations only cover insurance. As I have said there may be something in that in relation to section 10(2)(b) but it does not begin to meet the case based on passing off and on section 10(3) given that the marks Lloyd’s and Lloyd’s List have both been used in relation to publications which the defendant’s own publications compete with. It does not make any difference to those claims whether the marks actually cover the publications or not.

Secondly it is said as pleaded that there is a delay and acquiescence. The material relevant is also said to be a basis for refusing an injunction in paragraph 69 to 73 of the defence. In paragraph 69 it said that:

“The defendant contends that the court should not exercise its discretion in favour of the claimants because it would be inequitable to do so. The claimant has delayed in bringing this application until 9 November 2007 although it has been aware of the defendant’s allegedly infringing activities since May 2005. A letter of 27 May having been sent by the first claimant’s legal and compliance department to the defendant requesting information and hinting that it believed there was infringement. There is no good reason for delay.”

(Quote unchecked)

My comment there, of course, that the response enclosed letter would not have led Lloyd’s to think that there was any infringement, certainly not enough to bring proceedings. I think it is unfair to suggest that the claimants were aware of the issue in May 2005.

In any event as Ms Carboni points out on the face of the defence it seems as though the defendant has gone on with its activities regardless of its knowledge that the claimants did object to the use of Lloyd’s and Lloyd’s List.

For present purposes I can take the law on delay from paragraph 100 of Halsbury’s Laws of England the volume related to trademark for the United Kingdom.

“A claimant’s right of action for the infringement of a trade mark may become barred by consent, acquiescence or inordinate delay. Clearly, consent is a bar to an action. Where there has been an express terminable licence, consent may be withdrawn. A gratuitous licence will normally be revocable upon reasonable notice. [Then importantly] Acquiescence may bar a claim where the proprietor has in some way allowed or encouraged the infringement to assume that no objection will be taken to the acts in question so that the subsequent enforcement of the right would be unconscionable. Mere delay on the claimant’s part, even with knowledge of the defendant’s activities, does not amount to acquiescence; but inordinate delay may give rise to a defence if other factors are present. Delay may also affect the claimant’s right to damages or delivery up or other remedies.”

For the present purposes I think that that is a sufficiently accurate summary of the law in relation to trademarks which I can rely on. It is supported in any event by what is said in Daimler Chrysler AG v Javid Alavi t/as Merc [2001] ETMR 98 by Pumfrey J where at page 111 he deals with the final defence of acquiescence.

The judge says at paragraph 113:

“It is an essential component in a defence of acquiescence that the failure of the plaintiff to act should have induced the defendant to believe that the wrong was being assented to.”

Ordinary principles in relation to delay and acquiescence, which are not dissimilar to what I have just recited, apply in relation to passing off.

On the facts, I do not consider that there is any delay for which the claimants can be blamed, and certainly no delay which goes anywhere near giving rise to a defence based on acquiescence. In a sense the claim as presented misrepresents the position.

The first objectionable activity of the defendant was to use the domain name Lloydspp.com but that was not until January to March 2006. At least that was the first that Lloyd’s knew. That was complained about on 11 April 2006 and on Lloyd’s case the defendant stopped doing it, although the defendant’s case is it was not doing it in the first place.

There was correspondence in which the claimants tried to ascertain the nature of the defendant’s business. The defendant claimed that its areas of activity included publishing graphic design and related services but there was no evidence of any such activity actually taking place.

The claimants now know that the defendant registered another domain name Lloyds-pg.com in July 2006 but they did not know this at the time and they did not know that the defendant was building up a publishing and information directory business under the Lloyd’s name. That they did not discover until March 2007 as a result of which Lloyd’s wrote to the defendant immediately and matters went on from there.

That proceedings were not commenced until November 2007 cannot possibly give rise in the absence of an express consent to implication that consent was given. The defendant may have hoped that things would go to sleep, but they had not.

Although injunctive relief is, of course, always discretionary, the application before me seeks final injunctive relief on the basis of summary judgment, relief which is designed to reflect the rights of the parties as established. This is not a case of interim injunction to hold the position pending trial when a speedy application would be necessary.

The third defence. The defendant points to other entities with Lloyd, Lloyds or Lloyd’s in their name. The defence refers to 30 and Mr Casim has provided a table with rather more than that.

The claimant’s evidence is contained in the Witness Statements of Mr Demery, Ms Tumball and Mr Espin. Mr Demery refers to this in paragraph 5 to 9 of his second Witness Statement. He comments that the defendant has not given any details of the activities of the organisation on which it relies to support its claim of non-distinctiveness and further that unlike the activities of the defendant Lloyd’s has not received any information or complaints about these organisations which give rise to concern that they are infringing its trademark for passing themselves off. The mere existence of these companies, he says, does not give the defendant a legitimate defence or counterclaim. He explains that Lloyd’s keeps an eye out for infringers and will raise complaints against anyone using the names Lloyd’s or Lloyds or Lloyd in a way which appears likely to cause customer confusion.

He refers to three of the entities listed by the defendants that have come across his radar and give rise to concern. He explains a co-existence agreement was entered into with Hapag-Lloyd. Another company Deutsche Lloyd was, according to internet sources, amalgamated into Hapag-Lloyd and therefore falls under the umbrella of the co-existence agreement and in November Lloyd’s filed an opposition to an Argentinean application by Lloyd Triestino on the grounds of likelihood of confusion with Lloyd’s mark paragraphs 35 and 36, an application not yet determined. He also refers to the evidence of other deponents who had stated that Lloyd’s remains a highly distinctive trademark that distinguish the business of both the first and second claimants from those of third parties. There is certainly, from a number of the Witness Statements in this bundle, evidence to that effect. There is nothing other than assertion from Mr Casim to suggest that that is not correct. Without taking judicial notice of anything one cannot help but remark that it would be unsurprising to find that Lloyd’s retains its distinctive character.

Ms Tumbull endorses what Mr Demery says and reiterates that the second claimant has not received any notice of the confusion between the companies incorporated with the name Lloyd referred to in the defence and the second claimants Lloyd’s branded business.

Then Mr Espin in more recent evidence on 13 May 2008 deals with other Lloyd’s entities. I have already dealt with De Lloyd. He also deals with Germanischer Lloyd which is the trading name of Germanischer Lloyd AG which is a German company that describes itself as a globally operating technical monitoring group, and the company name contains Lloyd, not Lloyds or Lloyd’s. There is no use of Lloyd at all in the domain name or web address and the activities carried out by that company are totally distinct from the activities of the claimants. There have also never been any reported instances of confusion.

Secondly there is Lloyd Verst, it is a trading name of Lloyd Verst Ramahaden GmbH, a German shipyard company. There is no use of the words Lloyds or Lloyd’s in its own name. The trading name always includes the Verst element and again the activities carried out by Lloyd’s Verst are completely distinct to those of the claimant and there have been no reported instances of confusion.

As a matter of law, it is clear that the co-existence of more than one entity that has the same company or trade name is not fatal either to passing off or to the distinctiveness of a trademark.

Ms Carboni submits that there is absolutely no need for any further investigation to be done into the activities of these companies at a trial. Even if any of these companies were in exactly the same line of business as either of the claimants it is clear that the relevant public understand the defendant to be connected with one or other of the claimants rather than with any of the other entities that the defendant has identified. She says these are simply a red herring.

On the table which Mr Casim has presented me with as part of his evidence ten of the entities are within the Lloyd’s TSB Group and they all contain Lloyd’s TSB in their title, together with another word or words. Each is a ship finance company. Clearly Lloyd’s cannot stop Lloyd’s TSB nor could it have stopped its predecessor Lloyd’s Bank from using their equally well-established names. But the fact of that usage is it is used in a non-confusing way in a different field, financial services, and does not mean that Lloyd’s has in any way lost its distinctiveness.

Nineteen other entities use the name Lloyd in the singular so that one is already moving away from the claimant’s marks. Of those, nine are ship operators, one is a port agent, and one is a port operator. One group of four is the Lloyd, that group which I have already mentioned in dealing with Mr Espin’s evidence. Five others use the name Lloyd’s, one being maritime equipment, one being ship finance and one being a ship operator. I do not know what the other two were. All of these have other words in their name and many of them contain European place names in their name. References were also made to a number of companies such as Le Lloyd and De Lloyd which I have already mentioned as well as nine others whose business areas are not described in Mr Casim’s chart, such as P&O Nedlloyd and Hapag-Lloyd which I have already mentioned, which one knows are shipping companies.

There is no evidence of any confusion of these companies with the claimants, let alone the name Lloyd’s and Lloyd’s List other than it is associated with the claimants in their respective areas of business. In any event concurrent use, as I have said, of a name by two or more entities is not fatal to the claim.

In my judgment there is no prospect whatsoever of establishing that Lloyd’s and Lloyd’s List are other than distinctive marks. It is fanciful to think that the evidence relied on could establish the contrary.

The third defence it seems to me really goes to relief. Even if there had been passing off or trademark infringements in the past, it might be said that this is because of the way customers have been approached and not because of the material which is publicly available on the defendant’s website. Ms Carboni has relied heavily in her submissions on the evidence of such approaches and the resulting confusion to justify this summary judgment application. But if those approaches were because of some rogue representative (it is not suggested that it is so and I take it only to test the position) and that representative had been sacked, it might be argued that the use of the Lloyds Publishing Group is not passing off or infringement and that the claim for injunctive relief should be framed in a less draconian way than is sought.

There is, of course, nothing to prevent the defendant changing its name to something not liable to mislead (and perhaps even the initials LPG would do, I make not decision on that) and conducting business as it now does. Further a name which could not cause confusion but included Lloyd’s might be unobjectionable, for instance, Carboni, Warren and Lloyd’s. It would still give a web search hit referring the computer user possibly to the defendant’s website. But it is at least arguable that it would not thereby be trading on the back of Lloyd’s name and that there is no risk of confusion.

In other words even if the claimant’s claim is good, the proportionate response may not be as claimed. In particular it must be arguable that the use of the name Lloyds Publishing Group might be permitted to be retained as the company name provided that it was not allowed to be used as the badges of trade. Just as the defendant now uses Lloyds, it could use something, for instance, LPG and if the only reference to Lloyds Publishing Group is as it now appears on emails, it may be that this should be allowed to continue. But that is not a matter which I can decide on a summary judgment application.

Connected with this point is Mr Casim’s reference to his customers, from only a few of whom have there been any complaints such as the ones the claimants rely on. It may be that there have been no complaints and that his customers are indeed happy with the service that the defendant provides, but that does not meet the claimant’s case which is that it has been passing off and trademark infringements which is as serious, if not more so, in terms of loss of business. However, Mr Casim also says that the vast majority of his customers understand that the defendant is not connected with the claimants but still place their business, accordingly there is no passing off or trademark infringement.

There are at least two possible responses to that. First, that if that is so it is difficult to see how it would matter to those customers if the defendant were compelled to cease using Lloyds, either in its promotion of material or in its company name.

Secondly, it can be pointed out that there is not a single example given in evidence of a customer who states clearly that he has not been confused and had always understood that the defendant had nothing to do with the claimants.

The point is that there is a risk that customers will be deceived and confused.

However, as I have already stated it is clear that there is confusion or misleading misrepresentation, in relation to the customers who had given evidence, but those are all cases where communications between the defendant and the customers has included the misleading emails.

It is not so clear to me in relation to that that the website and other publicly available material alone would give rise to passing off and trademark infringement. The question is whether it is nonetheless sufficiently clear so as to allow no prospect of defence. In other words is it fanciful to suggest that that material alone does not give rise to a passing off or trademark infringement case. In answering that I have to bear in mind the evidence which Mr Casim wants to bring about his own customers, and their not having been misled.

The difficulty here is controlling matters for the future, because there must be a proportionate response, not only today but in the final disposition of these proceedings to ensure through the injunctive relief that what is stopped is an improper passing off or an improper infringement of the trademark but not to go further.

Quite clearly the claimants are entitled to injunctive relief which will stop the sort of behaviour which has occurred in the marketing material. I have no doubt that there is in the instances which have been shown to me in the evidence passing off and trademark infringement. But if one were looking only at the website it is not clear that that is so. What is more on the margins is the use of Lloyds by itself in the literature which Mr Casim and his company produced, the publications that go to the subscribers to his business.

As to that I think that this is an extremely finely balanced case between summary judgment or not summary judgment.

It is not so clear that taken by themselves those materials would result in passing off or trademark infringement in the context of a public which Mr Casim says his evidence will demonstrate has not been confused but has understood the difference between his company and Lloyd’s.

Against that I have to remember that what his company has done has been in the context of a marketing campaign which, in the examples I have seen, does amount to passing off and infringement and has been continued, notwithstanding the objections that have been taken by Lloyd’s.

I think that the fair way of dealing with this application is to accept that there is a suitable case for summary judgment in relation to the instances shown and to provide injunctive relief, if it can be formulated clearly, to prevent that sort of infringement.

But I am not satisfied for the purposes of a summary judgment application that at this stage Mr Casim should be prevented from using the name Lloyds Publishing Group Ltd as his company name. I am less happy that he should use the name Lloyds in promoting that company in the way that he does at the moment, or in using it on his publications.

I can see that at a full trial the result may well be that Mr Casim will lose his action. I do not want to encourage him to go on.

From what I have said it will be apparent that I think he has very difficult problems to meet. But I do not consider that I can go as far as Ms Carboni asked me to do in granting relief to prevent the use of the Lloyds Publishing Group Ltd name on a summary judgment basis.

Following the delivery of my judgment, there were discussions between Mrs Carboni (Counsel for the Claimants), Mr Casim (speaking on behalf of the Defendant) and myself concerning the appropriate relief to be granted. I determined, at least in principle, the relief to which the Claimants were entitled and decided upon a costs order. There was a short adjournment to allow Mrs Carboni and Mr Casim an opportunity to see if the details of an order could be agreed. In the event the parties came to terms in relation to the entire action and the details which I had left for discussion did not need to be resolved.

I indicated at the time, however, that it would be desirable, in the light of the discussions, for me to summarise the conclusions which I had reached. These conclusions were reached as a matter of decision before the matter settled and it is appropriate that I should record them. I now do so.

Trade mark infringement under section 10(3) TMA 1994 and passing off are both established in relation to past activities, with entitlement to injunctive relief in relation to the future. In more detail, see paragraphs 6 and 7 below.

Trade mark infringement under section 10(2) TMA 1994 is not established because there is an arguable defence in relation to non-similarity of goods and /or services.

The Defendant’s counterclaim for invalidity of the LLOYD’S and LLOYD’S LIST trade marks, based on lack of distinctive character, falls to be dismissed summarily.

The Claimants are entitled to permanent injunctive relief (being successful in their summary judgment application) to prevent the making of certain statements and marketing methods designed to convey the impression that the Defendant is or is connected with Lloyd’s or Informa, including in particular:

The Claimants are entitled to an interim injunction pending trial preventing the Defendant from using the domain name lloyds-pg.com or the web address www.lloyds-pg.com. The Claimants are to give a cross-undertaking in damages in relation to this relief. I should add in relation to this relief that I did not decide whether such injunctive relief should be granted with immediate effect or whether there should be a period during which the Defendant would be able to continue to use the domain name. The parties in fact agreed a period of a few weeks to allow this to be done. Similarly, a shorter period was allowed during which the Defendant’s website was allowed to continue to bear the names LLOYDS PUBLISHING GROUP, LLOYDS PUBLISHING and LLOYDS.

The Claimants are not entitled to an order preventing the use of the Defendant’s full company name, Lloyds Publishing Group Ltd. The Defendants are entitled to present evidence at trial to support a defence that this use will not inevitably involve trade mark infringement or passing off.

The Defendant is required to notify existing customers that it is not connected with either of the Claimants.

Although I was prepared to make certain orders relating to an account of profits and costs, I do not consider it necessary to record the detail since these matters were dealt with in the settlement between the parties in a different way from that which I had indicated.