Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor

The Claimants (“Och-Ziff Management” and “OZ Management” respectively, collectively “Och-Ziff”) allege that the First Defendant (“OCH Capital”) has infringed two Community registrations for the trade marks OCH-ZIFF and OCH (“the Trade Marks”) by use of the sign “OCH Capital”, and variants thereof, and has committed passing off. Och-Ziff further allege that the Second and Third Defendants (“Union” and “Mr Ochocki”) are jointly liable with OCH Capital. The Defendants deny infringement and passing off. In addition, OCH Capital counterclaims for a declaration that the OCH Trade Mark (but not the OCH-ZIFF Trade Mark) is invalid.

What should be a relatively straightforward dispute has been complicated by three factors. The first is the complexity and uncertainty of current European trade mark law. This factor has, however, been mitigated by the fact that both counsel dropped certain points which had been pleaded by their respective clients.

The second factor is that in certain respects the facts of the case are a little unusual. At least from the Defendants’ perspective, much turns on matters of pronunciation and presentation. I will elaborate on this point in due course, but at this stage it is sufficient to say that (i) the word “Och” in “Och-Ziff” derives from the surname of one Daniel Och and is correctly pronounced “Ock”, (ii) Mr Ochocki’s surname is correctly pronounced “Oh-hots-ki” and (iii) the Defendants contend that the name “OCH Capital” is intended to be, and is, vocalised as “Oh-See-Aitch Capital”. I will use “O-C-H” to mean “OCH” pronounced as “Oh-See-Aitch”.

The third complicating factor is that the Defendants’ conduct of the litigation has not been satisfactory. Of particular concern is OCH Capital and Union’s failure to comply with their disclosure obligations and court orders. On 4 February 2010 Master Teverson made an order for directions in conventional form requiring the parties to give standard disclosure by 25 March 2010 and to exchange witness statements by 6 May 2010. OCH Capital and Union served a disclosure statement and list late, on 21 May 2010. The disclosure statement failed to comply with CPR r. 31.10(7) and the list only included a few publicly available documents and inter partes correspondence. It is clear that OCH Capital and Union failed to carry out proper searches for relevant documents before serving that list. Indeed, it appears that they did not even properly carry out the searches that the statement claimed had been carried out.

Having failed to get a response to correspondence about the inadequacy of the statement and list, Och-Ziff applied for specific disclosure and further directions. On 21 July 2010 Deputy Master Cousins made an order by consent for specific disclosure by 2 August 2010 and exchange of witness statements by 17 August 2010. Only on the eve of trial did OCH Capital and Union attempt to comply with this order. Very late on Sunday 3 October 2010 they served a witness statement of Mr Ochocki. Late on Monday 4 October 2010 they served witness statements from two other witnesses. Later still that day they served an amended disclosure statement incorporating a supplemental list.

For the reasons I gave in a ruling on the first day of trial I permitted OCH Capital and Union to serve Mr Ochocki’s witness statement out of time on condition that Och-Ziff be permitted to join him as a defendant to the claim, but not the statements from the other witnesses. During the cross-examination of Mr Ochocki later that day, it became clear that, even when preparing the supplemental list, OCH Capital and Union had still not carried out proper searches for relevant documents. Over night, the Defendants carried out searches which resulted in further documents, including documents whose relevance was manifest, being disclosed early in the morning of the second day of trial accompanied by a second witness statement of Mr Ochocki explaining what had been done. This led to Mr Ochocki being recalled for cross-examination on that second statement. During the course of that cross-examination yet further documents were disclosed.

In the light of Mr Ochocki’s evidence I accept that the Defendants did belatedly make a sincere attempt to rectify their previous omissions and to search for relevant documents, but in my judgment it is plain that those searches were not as complete as they could and should have been had they been carried out at the proper time. As a result, I cannot be satisfied that the Defendants have disclosed all the documents which they should have disclosed.

Och-Ziff’s principal witnesses were Michael Cohen and Nicholas Lawson. Mr Cohen is the Chief Executive Officer of Och-Ziff Management and Head of European Investing for the Och-Ziff Group. Mr Lawson is Head of Macro Sales at Deutsche Bank. Rightly, counsel for the Defendants made no criticism of their evidence, which I accept. In addition, Och-Ziff served statements from Antony Ingrao and Sanford Heller, two witnesses as to confusion, whose evidence was not challenged.

For the reasons explained above, the Defendants’ only witness was Mr Ochocki. While I accept that Mr Ochocki was attempting to be truthful, I did not find him to be a witness in whose evidence I had confidence. On a number of points he was either vague or unclear or inconsistent. Furthermore, he had no explanation for the fact that the Defence served by OCH Capital and Union contained at least three factual statements which proved to be false. I have therefore treated his evidence with some caution.

Och-Ziff are part of the Och-Ziff Group, which is a leading global asset management group, managing numerous alternative investment funds. In other words, it is a hedge fund. The Och-Ziff Group was founded in 1994 by Mr Och, who is the Chairman and Chief Executive Officer of the parent company. A large proportion of the original financial backing came from three members of the Ziff family, but other than that they have had little involvement in the Group.

The Och-Ziff Group operates a series of funds, which rely upon diverse investment strategies. OZ Management and certain of its subsidiaries manage all of the Och-Ziff funds, and hence the investment portfolio of its clients generally. The Group has been extremely successful. The parent company was listed on the New York Stock Exchange on 14 November 2007, at the time the largest initial public offering (“IPO”) undertaken by a hedge fund, and the second largest by any asset management firm. By then the Group managed approximately $30 billion of assets. As at 1 May 2010 the Group managed around $26 billion of assets for about 600 fund investors. Both in 2007 and 2010 it was listed as the seventh largest global hedge fund.

Since the Och-Ziff Group was established, it has expanded internationally. By the time of its IPO, it had offices in six countries, including one in London. Och-Ziff Management was incorporated on 1 December 1998 as the Group’s European operating company. As at 1 November 2009, it managed approximately $8.3 billion of assets, including around $1.5 billion for UK-based clients. It acts as a sub-adviser to OZ Management (of which it is a wholly-owned subsidiary), and has a London-based investor relations team to market investment products to existing and prospective clients in the UK and elsewhere in Europe. Such clients include financial institutions, endowment funds, foundations, pension funds, insurance companies, high net-worth individuals and aggregators who act on behalf of large numbers of smaller investors. Around 40 investment professionals work at Och-Ziff Management’s London office in Argyll Street.

The Och-Ziff Group does not advertise its services. As a result of its success, however, the Och-Ziff Group has received substantial press coverage in the UK, including numerous articles in The Financial Times, The Times, The Daily Telegraph and The Independent, as well as specialist business and financial publications circulating here. Two particular factors that have contributed to this are its high-profile IPO and its involvement as a credit investor in the Glazer brothers’ acquisition of Manchester United Football Club in May 2005. It has also been involved in a number of other UK acquisitions. As a result of the Group’s own promotional efforts and the press coverage it has received, I am satisfied that the name Och-Ziff has become very well known to investment professionals in the UK and also to high net-worth individuals who are consumers of investment services. In addition, I consider that the name will be known to many in the wider financial services community.

An additional contributing factor to the reputation of the Och-Ziff Group is the personal profile of Mr Och. Mr Och worked as an equity trader for Goldman Sachs for nearly 12 years, during which he built up a strong personal professional reputation, before establishing the Och-Ziff Group. As the Chairman and CEO, Mr Och has a hands-on approach, including regular contact with the firm’s clients. Many of the Och-Ziff Group’s clients have been drawn to, and remain loyal to, the Group as a result of Mr Och’s involvement in it. Mr Och has himself been the subject of considerable press coverage, and the Och-Ziff Group is still very much viewed as Mr Och’s operation. Och-Ziff contend that the effect of this has been to accentuate the distinctiveness of the Och part of the Och-Ziff name amongst the relevant public.

Furthermore, the evidence shows that, at least occasionally, the Och-Ziff Group is referred to as “Och” or “OCH” for short. This has happened in one or two press articles. Mr Cohen gave evidence that advisors and investment banks that Och-Ziff dealt with often referred to them as “Och”. Mr Lawson gave evidence that all the dealer boards at Deutsche Bank used “OCH” to refer to Och-Ziff. He went on:

“So if someone shouted out, as we had last week, ‘the order is for Cohen’ and they go, ‘is that Stevie Cohen at SAC?’ ‘No, that is Cohen at O-C-H.’”

Mr Lawson believed that this was replicated at other investment houses.

Mr Ochocki has worked as a stock broker since 2001. Before establishing OCH Capital, he worked for HB Markets, IAF Securities and Argent, three companies which offered financial advisory and brokerage services. Mr Ochocki’s evidence, which I accept, is that colleagues and clients often found it difficult to pronounce his name and he frequently had to spell it out for them. As result, he came to be known as “Tom O-C-H”, among other nicknames. While he did not like this, and preferred people to call him by his proper name, he came to accept it.

OCH Capital was established by Mr Ochocki on 3 March 2009. Mr Saunders is his financial backer. Mr Ochocki and Mr Saunders are the two designated members in OCH Capital. Mr Ochocki owns 20% of the capital and Mr Saunders owns 80%. Mr Ochocki is OCH Capital’s Chief Executive.

Mr Ochocki’s evidence, which I accept, is that he chose the name OCH to reflect his nickname, and thus show that the business was connected with him, and that he added the word Capital to ensure that the public knew that they were dealing with a financial services firm.

Union is an investment management company. It was incorporated on 10 February 1993. As I understand it, Union was owned by Mr Saunders until March 2010. According to Mr Ochocki’s witness statement, the shares are still owned by Mr Saunders, but in cross-examination Mr Ochocki said that he had agreed to buy the company from Mr Saunders in March 2010.

By an agreement dated 8 April 2009 OCH Capital was appointed by Union as an appointed representative pursuant to section 39 of the Financial Services and Markets Act 2000. Mr Ochocki explained that this was quicker and simpler than OCH Capital obtaining its own independent Financial Services Authority authorisation.

OCH Capital started trading in late September 2009. As at 21 October 2009 and 23 December 2009 its website was still under construction and it did not have a brochure. It appears that its website was finalised and its brochure was produced right at the end of 2009.

OCH Capital describes itself on its website and in its brochure as follows:

“OCH Capital is an independent investment house based in Mayfair, London. The primary objective is to provide a superior investment service encompassing professional guidance of global securities and assets. Our collective partners have several decades of experience in the financial markets and provide first class insight and information.”

In its terms of business OCH Capital states:

“The main business of OCH Capital LLP is the management of non discretionary funds for individuals, their trusts, charities and pension funds, and for the professional advisors of these clients.”

Mr Ochocki’s evidence, which I accept, is that so far all OCH Capital has actually done is to provide stock broking services on an advisory and execution-only basis for high-net worth individuals or their companies. It can be seen from the quotations above, however, that OCH Capital describes its services in both its promotional materials and its terms of business in more general terms. Furthermore, the promotional materials offer additional specific services to those described by Mr Ochocki. For example, as at 21 October 2009, when the website was still under construction, OCH Capital’s website stated that it offered:

“a full range of services, including

•

Global Equities

•

Foreign Exchange (FX)

•

Contracts For Difference (CFD)

•

Awarding Winning Funds and Unit Trusts

•

Fixed Income

•

Private Equity

[and so on]”

In trade mark cases the genesis of the dispute can often be instructive. So it is in the present case. The timing of the claim is also relevant to some of the specific issues considered below.

Mr Ingrao is an interior designer based in New York who has worked for Mr Och on a number of occasions in the last 18 years. On 17 October 2009 he attended the Frieze art fair in Regent’s Park in the morning and the Pavilion of Art and Design fair in Berkeley Square in the afternoon. In the early evening he walked from Berkeley Square to the Mayfair Hotel in Stratton Street via Berkeley Street. While walking along Berkeley Street, he noticed an office building that had a large sign reading “OCH CAPITAL” at eye level in a ground floor window. (The sign in question is a monochrome version of the Logo discussed below.) Mr Ingrao’s immediate thought was that the office was occupied by Och-Ziff. He knew that Och-Ziff had had an office nearby, since he had been there. He assumed that this was a new Och-Ziff office, although he was surprised that the name Och was so conspicuously displayed. He therefore called Mr Och on his mobile telephone. Mr Ingrao said, “I see that you’ve moved”. Mr Och replied, “What do you mean?”. Mr Ingrao explained what he had just seen, and Mr Och said that he did not know anything about it. Mr Ingrao therefore took a photograph of the sign using his mobile and sent it to Mr Och. A few days later Mr Ingrao showed Mr Och the location in person.

As a result, Och-Ziff’s solicitors sent a letter before action to OCH Capital, with a copy to Union, on 20 October 2009 alleging trade mark infringement and passing off and seeking the provision of undertakings within 7 days. It should be noted that at that date OCH Capital had only just started trading, its website was still under construction and its brochure had not been printed. Not having had any response from OCH Capital, Och-Ziff issued and served the Claim Form in these proceedings on 2 November 2009. On 3 November 2009 OCH Capital replied to the letter dated 20 October 2009 denying infringement or passing off.

Counsel for the Defendants relied on the fact that in a letter dated 14 December 2009 OCH Capital and Union’s solicitors stated that their clients were “willing to change the presentation of the letters OCH to O.C.H to make it explicitly clear that their name is pronounced as OCH”. OCH Capital did not do this, however.

Council Regulation 207/2009/EC of 26 February 2009 (codified version) on the Community trade mark (“the Regulation”) provides inter alia as follows:

“Article 9 Rights conferred by a Community trade mark

1.

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

(a)

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

(b)

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

(c)

any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

Article 12 Limitation of the effects of a Community trade mark

A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:

(a)

his own name or address;

…

provided he uses them in accordance with honest practices in industrial or commercial matters.

Article 52 Absolute grounds for invalidity

1.

A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings,

…

(b)

where the applicant was acting in bad faith when he filed the application for the trade mark.”

These provisions correspond to Articles 3(2)(d), 5(1),(2) and 6(1)(a) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (“the Directive”) and to sections 3(6), 10(1)-(3) and 11(2)(a) of the Trade Marks Act 1994.

Och-Ziff Management is the registered proprietor of the following registrations:

Both Trade Marks are registered in respect of the same specification of goods and services. The Class 36 specification covers a wide range of services. The Claimants particularly rely on the following services within the Class 36 specification:

“financial services; investment services; investment services in relation to stocks, shares and property; securities trading; brokerage for securities trading; securities options and futures; foreign exchange transactions; financial advisory services; financial reports and information; stock market information.”

It is convenient to consider the Defendants’ attack on the validity of the OCH Trade Mark before turning to the issues on infringement. The only ground of invalidity which was pursued at trial was that Och-Ziff Management had acted in bad faith when it applied for the Trade Mark within Article 52(1)(b) of the Regulation. Significantly, a pleaded ground of invalidity on the basis of an earlier right under Article 53(1)(c) of the Regulation was not pursued.

I considered the law at some length in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] EWHC 3032 (Ch); [2009] RPC 9 at [166]-[193].

Subsequently, the Court of Justice of the European Union (as it now is) ruled in Case C-529/07 Chocoladenfabriken Lindt & Sprüngli AG v Franz Haüswirth GmbH [2009] ECR I-0000 as follows:

“In order to determine whether the applicant is acting in bad faith …, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a Community trade mark, in particular:

–         the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought;

–         the applicant’s intention to prevent that third party from continuing to use such a sign; and

–         the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.”

In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2009] EWCA 110 Civ, [2010] RPC 16 at [52] Lloyd LJ, with whom Jacob and Stanley Burnton LJJ agreed, summarised the guidance of the Court of Justice in Lindt as follows:

“Attention is to be focussed on the position at the time of the application for registration, and the intention and state of mind of the applicant at that time, although they are subjective factors, are to be determined by reference to the objective circumstances of the particular case. ... The court regarded it as relevant that a third party had long used a sign for an identical or similar product capable of being confused with the mark applied for, and that that sign enjoyed some degree of legal protection. In such a case the applicant's aim in obtaining registration might be to compete unfairly with a competitor who is using a sign which had gained some degree of legal protection. The court also regarded it as relevant that the registered mark consisted of the entire shape and presentation of the product, that being restricted for technical or commercial reasons (in respect of which it no doubt had in mind, for example, the essential shape of a rabbit or a hare), so that the registration, if valid, would prevent competitors not only from using a particular sign but also from marketing similar products at all.”

Counsel for Och-Ziff submitted that neither the judgment of the Court of Justice in Lindt nor that of the Court of Appeal in Cipriani had affected the validity of what I had said in Cipriani in the following paragraphs, in particular in the passages emphasised:

“189.

In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark. For example, it is not uncommon for prospective claimants who intend to sue a prospective defendant for passing off first to file an application for registration to strengthen their position. Even if the applicant does not believe that he has a superior right to registration and use of the mark, he may still believe that he is entitled to registration. The applicant may not intend to seek to enforce the trade mark against the third parties and/or may know or believe that the third parties would have a defence to a claim for infringement on one of the bases discussed above. In particular, the applicant may wish to secure exclusivity in the bulk of the Community while knowing that third parties have local rights in certain areas. An applicant who proceeds on the basis explicitly provided for in Article 107 can hardly be said to be abusing the Community trade mark system.

190.

Nor in my judgment does it amount to bad faith if what the applicant seeks to register is not the actual trade mark he himself uses but merely the distinctive part of his trade mark, the other part of which is descriptive or otherwise non-distinctive, and third parties are also using the distinctive part with different non-distinctive elements. It is commonplace for applicants to apply to register the distinctive elements of their trade marks, and with good reason. Moreover, in such a case the applicant would be unlikely to have an Article 9(1)(a) claim against the third parties, yet as noted above counsel for the Defendants accepted that the ability to make an Article 9(1)(b) claim was not enough to constitute bad faith”

Counsel for the Defendants did not argue to the contrary.

Counsel for the Defendants accepted that:

Counsel for the Defendants nevertheless submitted that Och-Ziff Management had acted in bad faith in filing the application because, as Och-Ziff Management would have appreciated, a registration for the word OCH would not only cover the name Och, but also the three letters OCH when used as an acronym. Counsel for the Defendants argued that, to that extent, the application was objectionable because it sought to protect a reputation which Och-Ziff did not have and because it was damaging to OCH Capital.

I do not accept this argument. In my judgment, the fact that OCH has a potential dual significance did not make it illegitimate for Och-Ziff Management to seek to register it as a trade mark. Depending how it is pronounced or presented, the context and the prior knowledge of the hearer, reader or viewer, OCH may be perceived as a name, as an ordinary Scottish word (an interjection expressing regret, irritation, etc) or as an acronym. I consider that Och-Ziff Management had a perfectly legitimate interest in seeking to monopolise the use of OCH in relation to financial services so as to be able to prevent uses that some consumers of such services in some circumstances would perceive as denoting the name Och even if other consumers or the same consumers in other circumstances might perceive the same use as denoting an acronym.

In any event, I find that Och-Ziff Management had a bona fide and reasonable belief that use of OCH by third parties such as OCH Capital would be damaging to, or take advantage of, the Och-Ziff Group’s reputation and goodwill. Furthermore, OCH Capital does not now claim that at the relevant date it had acquired any rights in the name OCH Capital. Accordingly, I conclude that Och-Ziff Management did not act in bad faith in filing the application for the OCH Trade Mark.

In a claim such as the present, it is necessary to identify the signs, and the uses that the defendant has made of those signs, with care. Och-Ziff complain about six different signs.

The sign “OCH”

The disclosure given belatedly by the Defendants on the second day of trial establishes that this sign has occasionally been used in internal emails by OCH Capital (some of these were sent from an email address associated with Moreton Group Ltd, another company of Mr Saunders’, but by an employee who also works for OCH Capital). Mr Ochocki’s evidence was that, after the commencement of the proceedings, he had given instructions that OCH Capital should always be referred to by its full name, but the documents demonstrate that on at least one occasion Mr Ochocki himself failed to abide by this rule. It is not surprising that others failed as well.

Counsel for Och-Ziff invited me to infer that OCH Capital’s employees had occasionally done the same thing in external emails. He acknowledged that there was no hard evidence that this had happened, but submitted that the state of the Defendants’ disclosure meant that the Defendants were unable to rebut the inference. I have some sympathy with this submission for the reasons given above. Nevertheless, I do not accept it. Inadequate though the Defendants’ searches have been, I consider it probable that uses of this kind would have been found if they had occurred with any frequency. Moreover, it is likely that OCH Capital’s employees will have been more careful about their usage in external emails than in internal ones.

The sign “OCH CAPITAL”

Despite a denial in the Defence, there is now no dispute that OCH Capital has used this sign, in particular on the home page of its website, which bears the following statement in a large font:

“OCH CAPITAL IS AN INDEPENDENT INVESTMENT HOUSE BASED IN MAYFAIR, LONDON.”

The sign “ochcapital” or “ochcapital.co.uk”

There is no dispute that OCH Capital has used “ochcapital.co.uk” as its domain name and hence as part both of its website address and its corporate and individual employees’ email addresses. Counsel for Och-Ziff submitted that the “.co.uk” suffix was wholly non-distinctive, and that it made no difference whether one regarded this usage as being of the sign “ochcapital” or of the sign “ochcapital.co.uk”. I accept that submission.

The sign “Och Capital”

The Defendants’ belated disclosure revealed that OCH Capital had used this sign on at least one occasion, namely in the agreement dated 8 April 2009. Mr Ochocki gave evidence that that was a mistake and that instructions had been given to correct it. I accept that it was a mistake, but not that any instructions were given to correct it. A different mistake in the same line of the agreement was corrected in manuscript and Mr Ochocki himself initialled that correction. I consider it more likely that no-one noticed the mistake at the time.

Counsel for Och-Ziff submitted that it was probable that the same mistake had been made on other occasions. I accept that submission.

The Logo

It is common ground that OCH Capital has used the following logo (“the Logo”) on its website, on its brochure, on its stationery and on the window of its office:

The sign “OCH Capital”

It is common ground that this is how OCH Capital frequently presents its name, both and without the suffix “LLP”.

Och-Ziff contend that OCH Capital’s use of signs (1)-(4) and (6) has infringed the OCH Trade Mark under Article 9(1)(a). Different issues arise in relation to sign (1) on the one hand and the remaining signs on the other hand.

Counsel for the Defendants accepted that OCH Capital’s use of “OCH” was use of a sign identical to the OCH Trade Mark in relation to services identical to those for which the Trade Mark was registered. He submitted, however, that the use was not “in the course of trade”.

Although counsel between them cited more than 40 cases, neither of them cited any authority on this issue. Nor did either of them address me at any length on the issue. In my view, however, the issue raises a difficult question of European trade mark law. With the benefit of hindsight, I should have pressed counsel for fuller submissions on the point. Be that as it may, my analysis is as follows.

The Court of Justice has repeatedly held that “in the course of trade” means “in the context of commercial activity with a view to economic advantage and not as a private matter”: Case C-206/01 Arsenal Football plc v Reed [2002] ECR I-10273 at [40]; Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-1017 at [18]; Case C-17/06 Céline Sàrl v Céline SA [2007] ECR I-7041 at [17]; Case C-533/06 O2 Holdings Ltd v Hutchison 3G Ltd [2008] ECR I-4231 at [60]; Case C-62/08 UDV North America Inc v Brandtraders NV [2009] ECR I-1279 at [44]; and Joined Cases C-236/08 to C-238/08 Google France SARL v Louis Vuitton Malletier SA [2010] ECR I-0000 at [50].

Although the meaning of the words “in the context of commercial activity with a view to economic advantage” is not entirely free from difficulty, I do not consider that it gives rise to any problem in the present case. In my judgment it is clear that the uses in question were in the context of commercial activity with a view to economic advantage.

The problem is what is meant by “and not as a private matter”. It is possible to read these words in two different ways. First, as simply providing a contrast to the words “in the context of commercial activity with a view to economic advantage”. On this reading, the words “and not as a private matter” assist to clarify the meaning and scope of the words “in the context of commercial activity with a view to economic advantage”, but do not amount to a separate, additional criterion. The second way is to read the words “and not as a private matter” is as imposing a separate, additional criterion.

Although neither counsel explicitly addressed this question, counsel for Och-Ziff implicitly adopted the first reading while Counsel for the Defendants implicitly adopted the second reading.

None of the first five cases cited in paragraph 54 above sheds any light at all on this question, but the judgment in Google France is of more assistance. In that case the Court of Justice held under the heading “use in the course of trade”:

“51.

With regard, firstly, to the advertiser purchasing the referencing service and choosing as a keyword a sign identical with another’s trade mark, it must be held that that advertiser is using that sign within the meaning of that case-law.

52.

From the advertiser’s point of view, the selection of a keyword identical with a trade mark has the object and effect of displaying an advertising link to the site on which he offers his goods or services for sale. Since the sign selected as a keyword is the means used to trigger that ad display, it cannot be disputed that the advertiser indeed uses it in the context of commercial activity and not as a private matter

53.

With regard, next, to the referencing service provider, it is common ground that it is carrying out a commercial activity with a view to economic advantage when it stores as keywords, for certain of its clients, signs which are identical with trade marks and arranges for the display of ads on the basis of those keywords.

54.

It is also common ground that that service is not supplied only to the proprietors of those trade marks or to operators entitled to market their goods or services, but, at least in the proceedings in question, is provided without the consent of the proprietors and is supplied to their competitors or to imitators.

55.

Although it is clear from those factors that the referencing service provider operates ‘in the course of trade’ when it permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis thereof, it does not follow, however, from those factors that that service provider itself ‘uses’ those signs within the terms of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94.

56.

In that regard, suffice it to note that the use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs.

57.

That conclusion is not called into question by the fact that that service provider is paid by its clients for the use of those signs. The fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign. To the extent to which it has permitted its client to make such a use of the sign, its role must, as necessary, be examined from the angle of rules of law other than Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94, such as those referred to in paragraph 107 of the present judgment.

58.

It follows from the foregoing that a referencing service provider is not involved in use in the course of trade within the meaning of the abovementioned provisions of Directive 89/104 and of Regulation No 40/94. ”

The reasoning with respect to the referencing service provider (i.e. the operator of the search engine, such as Google) is not entirely easy to follow. As I understand it, however, the Court of Justice’s starting point is that it was common ground that the referencing service provider was carrying out a commercial activity with a view to economic advantage (see [53]). Nevertheless, the Court of Justice held that there was no “use in the course of trade” by the referencing service provider (see [58]). The key step in the reasoning is at [56], where the Court holds that a referencing service provider does not itself use the sign in question because it does not use the sign “in its own commercial communication”.

It seems to me that this reasoning may be interpreted in two ways. The first is that the referencing service provider does not use the sign “in the course of trade” because its use is “as a private matter” even though it is “in the context of commercial activity with a view to economic advantage”. In other words, “and not as a private matter” is an additional criterion which is not satisfied in these circumstances. The second is that the referencing service provider does not “use” the sign at all within the meaning of Article 5 of the Directive and Article 9 of the Regulation: it simply provides the medium for the use made by the advertiser.

Although in most cases it will not matter which interpretation is adopted, since the result will be the same, I consider that the second interpretation is to be preferred since it more closely reflects what the Court of Justice actually says in this passage. (No doubt for this reason, it was common ground between the parties in Interflora, Inc v Marks & Spencer plc (No 2) [2010] EWHC 925 (Ch): see [12(i)].)

The second interpretation also has the advantage that it is easier to reconcile with the Court of Justice’s jurisprudence as to the meaning of the expression “genuine use” in the context of sanctions for non-use under Articles 10(1) and 12(1) of the Directive and Articles 15(1) and 51(1)(a) of the Regulation. None of those provisions require use of the trade mark by the proprietor to be “in the course of trade”.

In Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439 the Court of Justice held at [37]:

“It follows that ‘genuine use’ of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. The protection the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the mark loses its commercial raison d'être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings. Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns. Such use may be either by the trade mark proprietor or, as envisaged in Article 10(3) of the Directive, by a third party with authority to use the mark.”

In Case C-442/07 Verein Radetzky-Orden v Bundesvereinugung Kamradschaft ‘Feldmarschall Radetzky’ [2008] ECR I-9223 the Court of Justice held at [22]:

“In any event, in accordance with the finding of the Court in paragraph 37 of Ansul, and as the Advocate General pointed out in point 30 of his Opinion, use of a trade mark by a non-profit-making association during purely private ceremonies or events, or for the advertisement or announcement of such ceremonies or events, constitutes an internal use of the trade mark and not ‘genuine use’ for the purposes of Article 12(1) of the directive.”

It is clear from these authorities that purely internal use of a trade mark by its proprietor is not “genuine use” of that mark. It seems to me that the underlying rationale for this is that internal use is not “use” of the mark as a trade mark at all. To use the language of the Court of Justice in Google France, it is not use as part of (or even preparatory to) a commercial communication with a third party. Thus Google’s use of the signs complained of in the Google France case was neither infringing use, nor use that would suffice to maintain a trade mark registration for those signs. In my view that makes sense: compare Jacob LJ’s remarks in Reed at [149(a)].

For these reasons, I conclude that OCH Capital’s uses of the sign ”OCH” in internal emails did not constitute “use” of the sign within the meaning of Article 9(1)(a) at all; but if they did, they were not use “in the course of trade” because the use was “as a private matter”.

Counsel for the Defendants submitted that none of the remaining signs was identical to the OCH Trade Mark.

In Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799 the Court of Justice ruled that:

“a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”

In Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159, [2004] RPC 40 Jacob LJ, with whom Auld and Rix LJJ agreed, considered the Court of Justice’s guidance in Diffusion in detail at [22]-[32]. His conclusion was that, as he put it at [27]:

“… there is no reason to suppose that the Court meant to soften the edges of ‘strict identity’ very far.”

On the facts of the case, the Court of Appeal concluded that the sign “Reed Business Information” was not identical to the trade mark REED.

Similarly, in Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch), [2004] RPC 41 Laddie J held, applying the guidance of the Court of Justice in Diffusion and the Court of Appeal in Reed, that the sign “Compass Logistics” was not identical to the trade mark COMPASS.

Counsel for Och-Ziff argued that those decisions were distinguishable on the facts, in particular because OCH (however presented) was highly distinctive for financial services whereas CAPITAL (however presented) was descriptive of such services, and in particular investment services. I accept that OCH is highly distinctive and that CAPITAL is descriptive, or at least non-distinctive. I do not accept that it follows that the addition of CAPITAL to OCH is so insignificant that it would go unnoticed by the relevant average consumer. In my judgment none of the remaining signs is identical to the OCH Trade Mark.

The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation, the corresponding provisions in the Directive and the corresponding provisions concerning relative grounds of objection to registration in both the Regulation and the Directive should be interpreted and applied has been considered by the Court of Justice in a considerable number of decisions, and in particular the leading cases of Case C-251/95 SABEL BV v Puma AG [1997] ECR I-6191, Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Meyer Inc [1998] ECR I-5507, Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819, Case C-425/98 Marca Mode CV v Adidas AG [2000] ECR I-4861, Case C-3/03 Matrazen Concord GmbH v Office for Harmonisation in the Internal Market [2004] ECR I-3657, Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 and Case C-334/05 Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS [2007] ECR I-4529.

In La Chemise Lacoste SA v Baker Street Clothing Ltd (O/330/10) Geoffrey Hobbs QC sitting as the Appointed Person quoted with approval the following summary of the principles established by these cases for use in the registration context:

“(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f)

and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g)

a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;

(h)

there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i)

mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k)

if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.”

This summary has the advantage over the summary which I quoted in Cipriani at [115] that it includes the Court’s guidance with regard to composite marks. That guidance is relevant to the present case.

During the course of argument two important and related issues arose as to the application of these principles in the infringement context.

It is common ground that it is now clear that there is an important difference between the comparison of marks in the registration context and the comparison of mark and sign in the infringement context, namely that the former requires consideration of notional fair use of the mark applied for, while the latter requires consideration of the use that has actually been made of the sign in context. This was established by the judgment of the Court of Justice in Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2008] ECR I-4231, which the Court held as follows:

“63.

By contrast, in accordance with the the referring court’s own findings, the use by H3G, in the advertisement in question, of bubble images similar to the bubbles trade marks did not give rise to a likelihood of confusion on the part of consumers. The advertisement, as a whole, was not misleading and, in particular, did not suggest that there was any form of commercial link between O2 and O2 (UK) on the one hand, and H3G, on the other.

64.

In that regard, contrary to the submission of O2 and O2 (UK), the referring court was right to limit its analysis to the context in which the sign similar to the bubbles trade marks was used by H3G, for the purpose of assessing the existence of a likelihood of confusion.

65.

It is true that the notion of likelihood of confusion is the same in Articles 4(1)(b) and 5(1)(b) of Directive 89/104 (see, to that effect, Case C-425/98 Marca Mode [2000] ECR I-4861, paragraphs 25 to 28).

66.

Article 4(1)(b) of Directive 89/104, however, concerns the application for registration of a mark. Once a mark has been registered its proprietor has the right to use it as he sees fit so that, for the purposes of assessing whether the application for registration falls within the ground for refusal laid down in that provision, it is necessary to ascertain whether there is a likelihood of confusion with the opponent’s earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered.

67.

By contrast, in the case provided for in Article 5(1)(b) of Directive 89/104, the third-party user of a sign identical with, or similar to, a registered mark does not assert any trade mark rights over that sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion.”

The question which arises is this: how far do the “context” referred to by the Court at [64] and the “circumstances characterising that use” referred to by the Court at [67] extend? Counsel for Och-Ziff submitted that the context and circumstances were limited to the actual context and circumstances of the use of the sign itself. Thus, in the O2 case itself, where the sign was used in a comparative advertisement, the context was the whole of the comparative advertisement, but no more. By contrast, counsel for the Defendants submitted that the context and circumstances included all circumstances relevant to the effect of the use of the sign, including circumstances prior to, simultaneous with and subsequent to the use of the sign.

In my judgment the context and circumstances are limited to the actual context and circumstances of the use of the sign itself. The Court of Justice explicitly said at [64] that the referring court was right to “limit its analysis” to the context in which the sign was used. Furthermore, it referred at [67] to the circumstances “characterising the use”, not to the circumstances more generally. Thus circumstances prior to, simultaneous with and subsequent to the use of the sign may be relevant to a claim for passing off (or, under other legal systems, unfair competition), but they are not generally relevant to a claim for trademark infringement under Article 9(1)(b). In saying this, I do not intend to express any view on the question of post-sale confusion referred to below.

Counsel for Och-Ziff submitted that Article 9(1)(b) extends to what is known to trade mark lawyers as “initial interest confusion”, whereas counsel for the Defendants submitted that it does not.

“Initial interest confusion” is an expression that derives from US trade mark law. It was succinctly defined in a resolution adopted by the International Trade Mark Association on 18 September 2006 as follows:

“initial interest confusion is a doctrine which has been developing in U.S. trademarks cases since the 1970s, which allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.”

A well-known hypothetical example of initial interest confusion which was discussed in the judgment of Circuit Judge O’Scannlain in Brookfield Communications, Inc v West Coast Entertainment Corp 174 F. 3^rd 1036 (9^th Cir., 1999) at 1064 involves two video stores:

“Suppose West Coast's competitor (let's call it ‘Blockbuster’) puts up a billboard on a highway reading ‘West Coast Video: 2 miles ahead at Exit 7’ where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill.”

Two points should be noted about this example. The first is that it is a “double identity” case (use of a sign identical to the trade mark in relation to goods or services identical to that for which it is registered.) The second is that it involves conduct that is sometimes referred to as “bait-and-switch”. That is to say, the defendant deliberately uses the claimant’s trade mark as a bait to attract the consumer’s attention, and then exploits the opportunity thus created to switch the consumer’s purchasing intention to his own product or service.

So far as I am aware, the first US case in which liability was established on the basis of initial interest confusion was Grotrian, Helfferich, Schultz., Th. Steinweg Nachf. v Steinway & Sons 523 F.2d 1331 (2d Cir., 1975). The parties were historically linked, since the founder of Steinway & Sons, Heinrich Steinweg, had begun making pianos marked Steinweg in Germany. When he immigrated to New York, where he became known as Henry Steinway, he sold the business to Grotrian, Helfferich and Schultz, with permission to use the name “Successors to C.F. Theodor Steinweg”. At the time of the dispute, Grotrian was exporting to the USA pianos marked Grotrian-Steinweg. Grotian sought a declaration of non-infringement, and Steinway counterclaimed. Unlike the example given in Brookfield, it was not a double identity case.

The 2nd Circuit Court of Appeal upheld the trial judge’s finding of infringement for reasons which Circuit Judge Timbers expressed at 1342 as follows:

“We recognize that in a trademark infringement action the kind of product, its cost and the conditions of purchase are important factors in considering whether the degree of care exercised by the purchaser can eliminate the likelihood of confusion which would otherwise exist. We decline to hold, however, that actual or potential confusion at the time of purchase necessarily must be demonstrated to establish trademark infringement under the circumstances of this case.

The issue here is not the possibility that a purchaser would buy a Grotrian-Steinweg thinking it was actually a Steinway or that Grotrian had some connection with Steinway and Sons. The harm to Steinway, rather, is the likelihood that a consumer, hearing the ‘Grotrian-Steinweg’ name and thinking it had some connection with ‘Steinway’, would consider it on that basis. The ‘Grotrian-Steinweg’ name therefore would attract potential customers based on the reputation built up by Steinway in this country for many years. The harm to Steinway in short is the likelihood that potential piano purchasers will think that there is some connection between the Grotrian-Steinweg and Steinway pianos. … Such initial confusion works an injury to Steinway.”

In that case the court held that Grotian was intentionally trading on Steinway’s goodwill, but in my view this reasoning would hold good even if Grotrian had not had that intention.

Another early decision of the 2^nd Circuit was Mobil Oil Corp v Pegasus Petroleum Corp 818 F.2d 254 (2nd Cir., 1987). Pegasus Petroleum was an oil trading company. Mobil accused Pegasus Petroleum of infringing its flying horse trade mark (Pegasus was a flying horse). The 2^nd Circuit accepted that consumers would not be confused as to source or affiliation at the time of purchasing oil from Pegasus Petroleum, but nevertheless found that Pegasus Petroleum had infringed because it was likely that, as the Court put it at 259:

“Pegasus Petroleum would gain crucial credibility during the initial phases of a deal. For example, an oil trader might listen to a cold call from Pegasus Petroleum … when otherwise he might not, because of the possibility that Pegasus Petroleum is related to Mobil.”

More recently, the doctrine of initial interest confusion has been adopted by the 3^rd Circuit (see Checkpoint Systems, Inc v Check Point Software Technologies, Inc 269 F.3d 270 (3^rd Cir., 2001)), the 5^th Circuit (see Elvis Presley Enterprises, Inc v Capece 141 F.3d 188 (5^th Cir., 1998)), the 7^th Circuit (see Promatek Industries Ltd v Equitrac Corp 300 F.3d 808 (7^th Cir., 2002)), the 9^th Circuit (see Brookfield and Playboy Enterprises, Inc v Netscape Communications Corp 354 F. 3d 1020 (9^th Cir., 2004)) and the 10^th Circuit (see Australian Gold, Inc v Hatfield 436 F.3d 1228 (10^th Cir., 2006)); but the 4^th Circuit has declined to adopt it (see Lamparello v Falwell 420 F. 3d 309 (4^th Cir., 2005) cert. den. 126 S. Ct. 1772 (2006)); while the position in the 6^th Circuit is unclear (compare PACCAR Inc v TeleScan Techs, LLC 319 F.3d 243 (6th Cir., 2003) with Gibson Guitar Corp v Paul Reed Smith Guitars, LP 423 F.3d 539 (6^th Cir., 2005) cert. den. 126 S.Ct. 2355 (2006)). My impression is that the doctrine is increasingly accepted in US law, but remains both controversial in some quarters and uncertain as to its application and scope even where it is accepted: see the INTA resolution and Dinwoodie and Janis, Trademarks and Unfair Competition: Law and Policy (3^rd ed, Wolters Kluwer, 2010) pp. 558-574.

What then is the status of initial interest confusion in European trade mark law? For this purpose, I shall define “initial interest confusion” as confusion on the part of the public as to the trade origin of the goods or services in relation to which the impugned sign has been used arising from use of the sign prior to purchase of those goods or services, and in particular confusion arising from use of the sign in advertising or promotional materials. Both counsel addressed this question from first principles as well as on authority.

Before turning to the arguments on Article 9(1)(b), it is important to bear in mind that in double identity cases falling within Article 9(1)(a) a likelihood of confusion is presumed (as required by Article 16(1) of the Agreement on Trade-related Aspects of Intellectual Property Rights). In general, it is therefore immaterial whether there is a likelihood of confusion in fact, although the jurisprudence of the Court of Justice does require that there be an effect on the one of the functions of the trade mark (see in particular Case C-487/07 L’Oréal SA v Bellure NV [2009] ECR I-5185). In a double identity “bait-and-switch” case, such an effect will not be hard to find.

Turning to Article 9(1)(b), counsel for Och-Ziff pointed out that all that this requires is “a likelihood of confusion on the part of the public”. There is no requirement for a likelihood of confusion at any particular point in the process of selecting and purchasing goods or services, still less is there any requirement for actual confusion. He argued that confusion as to trade origin at a point prior to purchase is still confusion, and that confusion at that stage could be damaging to the trade mark proprietor and/or advantageous to the user of the sign even if that confusion is dispelled prior to purchase. Furthermore, he pointed out that it is clear from Article 9(2) that there may be an infringing use of a sign even if there is no sale, in particular by use in an advertisement.

Counsel for the Defendants pointed out that “initial interest confusion” can encompass a range of different situations and submitted that it was important to differentiate between them. In particular, he argued that it was important to distinguish between situations in which the user of the sign was intentionally targeting the trade mark proprietor’s customers and situations where initial interest confusion was caused entirely innocently. He did not dispute that “bait-and-switch” use of a similar sign should be actionable, but submitted that this did not militate the conclusion that it should be actionable under Article 9(1)(b). Instead, he submitted that this would be more appropriately dealt with under Article 9(1)(c). He argued that “likelihood of confusion” was restricted to confusion at the point of sale.

Turning to the authorities, counsel for Och-Ziff relied on three authorities as supporting the proposition that initial interest confusion was actionable under Article 9(1)(b). To these may be added the decision in O2 discussed above and the Court of Justice’s recent decision in Case C-558/08 Portakabin Ltd v Primakabin BV [2010] ECR I-0000.

In BP Amoco plc v John Kelly Ltd [2002] FSR 5 BP was the proprietor of a registered trade mark for the colour green as applied to the exterior surface of the premises used for the sale of the goods, which was registered for goods which included lubricants and fuels in Class 4. The first defendant adopted a petrol station design which featured the colour green. The Court of Appeal of Northern Ireland upheld the claim for trade mark infringement. In doing so Lord Carswell CJ giving the judgment of the Court said at [44]:

“[Counsel for BP] emphasised the point that when a motorist travelling at speed sees a green station, at a distance at which the logo cannot be made out, and starts to make preparations to turn off into the station, he is liable to continue his manoeuvre even though he may descry the logo as he nears the station and appreciate that the petrol on sale is that of the respondents and not of BP. As he put it, the antidote to the bane has not been applied and that is a customer lost. We consider that there is force in this contention. ”

In Whirlpool Corp v Kenwood Ltd [2008] EWHC 1930 (Ch), [2009] RPC 2 Whirlpool was the proprietor of a Community trade mark for a representation of a food mixer. It claimed that Kenwood had infringed the trade mark by marketing a similar design of mixer pursuant to Article 9(1)(b) and (c). Geoffrey Hobbs QC sitting as a Deputy High Court Judge held at [75]:

“It is sufficient for the purposes of Art.9(1)(b) to establish the existence of a likelihood of confusion in only part of the Community.⁵⁵ The concept of ‘using in the course of trade’ is amplified by Art.9(2) in a way that appears to make it sufficient for the purpose of establishing liability under Art.9(1)(b) for there to be ‘a likelihood of confusion on the part of the public’ at any material stage or in relation to any material aspect of the commercialisation of the sign in question. From that I think it follows that ‘bait and switch’ selling can be prevented under Art.9(1)(b) on the basis that the process of buying goods or services should, from selection through to purchase, be free of the distorting effects of confusion. I mention that because Whirlpool's claim under Art.9(1)(b) relied on the proposition that there would be a likelihood of confusion unless and until the branding of the kMix as a KENWOOD product impinged upon the consciousness of interested consumers: the shape and appearance of the kMix would initially tell them it was a ‘KitchenAid’ product and the KENWOOD branding would not tell them otherwise until after they had gone down the road of selection with a view to purchase. It is possible for a claim to succeed on that basis.⁵⁶ However, I do not accept that in the present case there will be any initial confusion in the mind of the relevant average consumer. There will, in my view, be nothing more than an awareness that the product they are looking at is not the one it reminds them of.”

The principal authority cited in footnote 56 was BP v Kelly. The judgment of the Court of Appeal [2009] EWCA Civ 753, [2010] RPC 2 did not touch upon this question.

In O2 the Court of Justice held at [36]:

“Therefore, the use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104.”

Later the Court held at [59]:

“Second, it is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that provision (see, inter alia, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17, and Medion, paragraph 26). Thus, use of a sign which is identical with, or similar to, the trade mark which gives rise to a likelihood of confusion on the part of the public affects or is liable to affect the essential function of the mark.”

As set out above, the Court went on to hold that there was no likelihood of confusion because the national court had found that the use of the sign was not confusing when assessed in the context of the comparative advertisement taken as a whole. It is implicit, however, that, if the use of the sign in the context of the comparative advertisement had been confusing, then there would have been a likelihood of confusion within Article 9(1)(b).

Case C-278/08 Die BergSpechte Outdoor Reisen under Alpinschule Edi Koblmüller GmbH v Guni [2010] ECR I-0000 is another decision of the Court of Justice concerning the services of internet search engine operators such as Google. In its judgment the Court held:

“38.

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see, inter alia, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I–3819, paragraph 17; Case C-120/04 Medion [2005] ECR I–8551, paragraph 26; and Case C–102/07 adidas and adidas Benelux [2008] ECR I–2439, paragraph 28).

39.

It follows that, should the rule set out in Article 5(1)(b) of Directive 89/104 be applicable to the dispute in the main proceedings, it will be for the national court to hold whether there is a likelihood of confusion when internet users are shown, on the basis of a keyword similar to a mark, a third party’s ad which does not enable normally informed and reasonably attentive internet users, or enable them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.”

On this basis the Court ruled as follows:

“Article 5(1) of [the Directive] must be interpreted as meaning that a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark, which that advertiser has selected for an internet referencing service without the consent of the proprietor, in relation to goods or services identical to those in respect of which the mark is registered, where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party.”

It again seems clear from this that there can be a likelihood of confusion within the meaning of Article 9(1)(b) at the point when a consumer views an advertisement, whether or not the advertisement leads to a sale and whether or not the consumer remains confused at the time of any such sale.

This interpretation is supported by the most recent decision in this line of cases, namely Portakabin. At [51]-[52] the Court reiterated what it had said in Die BergSpechte at [38]-[39]. It then said at [53] that the guidance it had set out at [35] was applicable by analogy. That guidance was as follows:

“On that point the Court has also stated that, in the case where a third party’s ad suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on the function of indicating origin. Similarly, in the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark (Google France and Google, paragraphs 89 and 90, and BergSpechte, paragraph 36).”

Again, it follows that there may be a likelihood of confusion as result of the advertisement.

Counsel for the Defendants was unable to cite any authority to support the proposition that initial interest confusion is not actionable under Article 9(1)(b). The best he could come up with was the decision of the Court of Justice in Case C-361/04 Ruiz-Picasso v Office for Harmonisation in the Internal Market [2006] ECR I-643. That was a decision as to the registrability of the mark PICARO for vehicles in the context of an opposition based on an earlier registration of PICASSO. One of the points in issue was the level of attention of the relevant average consumer. The Court of Justice held that the Court of First Instance had not erred in holding that the average consumer of vehicles would exhibit a high level of attention. The key paragraphs in this section of the judgment are as follows:

“41.

As to the fact that the relevant public is also likely to perceive such goods and the marks relating to them in circumstances unconnected with any act of purchase and to display, where appropriate, a lower level of attention on such occasions, the Court of First Instance was also fully entitled to observe, again in paragraph 59 of the judgment under appeal, that the existence of such a possibility does not prevent the taking into account of the particularly high level of attention exhibited by the average consumer when he prepares and makes his choice between different goods in the category concerned.

42.

First, it is clear that, whatever the goods and marks at issue, there will always be situations in which the public faced with them will grant them only a low degree of attention. However, to require that account be taken of the lowest degree of attention which the public is capable of displaying when faced with a product and a mark would amount to denying all relevance, for the purpose of an assessment of the likelihood of confusion, to the criterion relating to the variable level of attention according to the category of goods, noted in paragraph 38 of this judgment.

43.

Second, as observed by OHIM, the authority called upon to assess whether there is a likelihood of confusion cannot reasonably be required to establish, for each category of goods, the consumer’s average amount of attention on the basis of the level of attention which he is capable of displaying in different situations.”

This does not address initial interest confusion. It is true that the Court went on at [44]-[48] to discuss the question of post-sale confusion and, on one reading, appears to have concluded that post-sale confusion is not relevant to a claim under Article 9(1)(b) although it is to a claim under Article 9(1)(a). Even if that is the correct interpretation of that passage, which is open to debate, I do not consider this shows that initial interest confusion is not actionable under Article 9(1)(b).

My conclusion is that the weight of authority supports the conclusion that initial interest confusion is actionable under Article 9(1)(b). Furthermore, I find the arguments of principle in favour of this conclusion advanced by counsel for Och-Ziff more compelling than those against it advanced by counsel for the Defendants. Counsel for the Defendants had no convincing answer to the point that Article 9(2) shows that there may be an infringing use of a sign even if there is no sale, in particular in an advertisement. As discussed above, this analysis is supported by the decisions in O2, Die BergSpechte and Portakabin. Nor did he have a convincing answer to the point that confusion arising from an advertisement is capable of causing damage to the trade mark proprietor even if such confusion would be dispelled prior to any purchase. Although there will be no diversion of sales in such circumstances, there are at least two other ways in which the trade mark proprietor may be damaged. The first is that a confusing advertisement may affect the reputation of the trade marked goods or services. It is irrelevant for this purpose whether the defendant’s goods or services are objectively inferior to those of the trade mark proprietor. The second is that such confusion may erode the distinctiveness of the trade mark. Both of these points were explained with characteristic lucidity and verve by Laddie J in the context of passing off by false endorsement in Irvine v Talksport Ltd [2002] EWHC 367 (Ch), [2002] 1 WLR 2355, in particular in the passages quoted below. Finally, I consider that this conclusion is consistent with my conclusion on the extent of the contextual assessment required.

It is common ground that OCH Capital has used signs (2)-(6) identified above in relation to services identical to some of those for which the OCH Trade Mark is registered. It is worth emphasising that OCH Capital has used the signs in relation to a wider range of services than it has actually provided to its clients, because it has promoted and offered such services under and by reference to those signs.

Counsel for Och-Ziff submitted that there two are relevant types of consumer of financial services, and in particular investment services. The first type is financial services professionals, and in particular investment professionals. The average consumer of this type may be expected to be knowledgeable and highly attentive. The second type is ordinary consumers of these services, such as high net-worth individuals. The average consumer of this type will have some knowledge of the market and will be moderately attentive, but less so than the average consumer of the first type. Counsel for the Defendants did not seriously dispute this analysis, and I accept it.

Counsel for Och-Ziff submitted that OCH was both inherently distinctive and had acquired a reputation in relation to financial services, and in particular investment services. Counsel for the Defendants accepted that OCH was both inherently distinctive and had an acquired reputation if read as Och; but submitted that; if read as O-C-H, it was only weakly distinctive and had no acquired reputation. In my judgment OCH is strongly distinctive for financial services. Even if it is read as O-C-H, there is no evidence that any one else uses that mark in the field of financial services.

Turning to the visual, aural and conceptual similarities between the signs and the Trade Mark, counsel for the Defendants accepted that the Trade Mark covered both Och and O-C-H. Thus the essential difference between each of the signs and the Trade Mark is the addition of the word CAPITAL. (Counsel for the Defendants did not suggest that the presence of the coat of arms in the Logo made any difference.)

Counsel for the Defendants submitted that the addition of the word CAPITAL sufficed to avoid a likelihood of confusion. I disagree. As discussed above, CAPITAL is descriptive, or at least non-distinctive, for financial services, and in particular investment services. Given the distinctiveness of the Trade Mark, the identity of the services and the non-distinctiveness of the word CAPITAL, I consider that there is a manifest likelihood of confusion on the part of both types of consumer in the case of all five signs.

I did not understand counsel for the Defendants to rely on the arguments about contextual assessment and initial interest confusion which he advanced in relation to the OCH-ZIFF Trade Mark, and which are considered below, in relation to the OCH Trade Mark. If I am wrong about that, my answers would be the same.

I therefore conclude that OCH Capital’s use of each of signs (2)-(6) falls within Article 9(1)(b) and thus amounts to an infringement subject to OCH Capital’s defence under Article 12(a) considered below.

It is again common ground that OCH Capital has used signs (2)-(6) identified above in relation to services identical to some of those for which the OCH-ZIFF Trade Mark is registered. I have already considered the relevant average consumers above.

Counsel for the Defendants did not dispute that OCH-ZIFF was both inherently strongly distinctive and had acquired a reputation in relation to financial services, and in particular investment services.

As for the distinctive and dominant components of the Trade Mark, counsel for Och-Ziff submitted that both elements of the mark were independently distinctive. In support of this, he relied on the factors that both OCH and ZIFF were distinctive for financial services, and in particular investment services; that OCH would be known by most consumers familiar with the Trade Mark to be Mr Och’s name; that OCH was sometimes used as a shorthand for OCH-ZIFF; and that the hyphen in OCH-ZIFF ensured that OCH and ZIFF continued to be distinct rather than merged into a single identity. I accept that analysis.

Turning to the visual, aural and conceptual similarities between the signs and the Trade Mark, the essential differences between each of the signs and the Trade Mark are that (i) the Trade Mark contains the suffix –ZIFF while the signs do not and (ii) the signs include the word CAPITAL whereas the Trade Mark does not.

In my view the latter difference does not prevent there being a likelihood of confusion for the reasons given above. What about the former difference? Counsel for Och-Ziff submitted that it did not avoid a likelihood of confusion in the case of either type of consumer, because OCH retained an independent distinctive role in both the Trade Mark and the signs. I accept that submission. In my judgment it is likely that some consumers of financial services, and in particular investment services, will think that OCH Capital is at least connected with Och-Ziff because of the presence in both the Trade Mark and the signs of the distinctive OCH element.

Counsel for Och-Ziff also relied on the fact that there was evidence of three instances of actual confusion. The first instance is the incident involving Mr Ingrao related above. The second is a similar incident involving Mr Heller. Mr Heller is an art consultant based in New York who has worked for Mr Och for the last five years. In June 2010 he was in London to attend sales at Christie’s and Sotheby’s. On 22 June 2010 he was walking along Berkeley Street when he saw a building with a sign in the window reading “OCH CAPITAL” (i.e. the Logo, as discussed above). He assumed that the offices were those of Mr Och’s firm even though they seemed to be out of character for Mr Och. He took a photograph of the sign using his mobile telephone and sent it to Mr Och with the message “Thinking of you from London”. An hour or two later he spoke to Mr Och on telephone, and Mr Och explained about OCH Capital.

The third instance was testified to by Mr Cohen. Shortly after Mr Och had told him about OCH Capital, Mr Lawson received a telephone call from Peter Silverman, a friend of his who is Managing Director of the investment bank Laidlaw and Co. Mr Silverman is based in London and provides private client services. Mr Silverman said words to the effect that he had seen that Och-Ziff had opened a new office on Berkeley Square. Mr Cohen then explained the situation.

Counsel for the Defendants submitted that Mr Ingrao, Mr Heller and Mr Silverman were unrepresentative, since they were not consumers of financial services, and in particular investment services, and in the case of Mr Ingrao and Mr Heller were both Americans closely acquainted with Mr Och. I do not accept that submission. There is nothing to suggest that Mr Ingrao, Mr Heller or Mr Silverman reacted in a different way to the manner in which a UK consumer of investment services who was aware of the reputation of the Trade Mark would react. Indeed, it is telling that Mr Silverman, who is a provider of investment services rather than a consumer of them, was confused, since one would expect a provider of such services to be less likely to be confused than a consumer.

Counsel for the Defendants also submitted that the fact that there had only been three instances of confusion to date demonstrated that there was no substantial likelihood of confusion. I do not accept that. It is not surprising that more instances of confusion have not come to light given that (i) OCH Capital has only been trading for just over a year, (ii) to date OCH Capital has 82 clients of whom 70 were clients of OCH Capital’s brokers at their previous firms, (iii) OCH Capital does not advertise and thus far has only provided a limited range of services and (iv) OCH Capital’s searches were inadequate. In any event, it is not necessary for the claimant in an Article 9(1)(b) claim to prove any actual confusion at all in order to succeed. What matters is whether the court considers that there is a likelihood of confusion. In my judgment the evidence of actual confusion supports the conclusion that there is a likelihood of confusion.

Finally, counsel for the Defendants argued that, even if the uses of the signs complained of gave rise to initial interest confusion, any such confusion would be dispelled by the time that any potential client of OCH Capital entered into a contract with it. I think it is probable, although not certain, that such confusion would be dispelled by that point. For the reasons given above, I do not accept that this means that there is no likelihood of confusion. OCH Capital has used the signs complained of in promotional contexts, such as on the website and in the brochure. It is sufficient for the purposes of Article 9(1)(b) if those uses give rise to a likelihood of confusion. Furthermore, for the reasons explained above, such confusion is likely to be damaging to Och-Ziff.

In my judgment OCH Capital’s use of signs (2)-(5) gives rise to a greater likelihood of confusion than its use of sign (6). This is because, even on the basis of a contextual assessment of those uses, there is nothing to alert the consumer who is familiar with OCH-ZIFF to the fact that the OCH element of the sign is intended to be read as O-C-H rather than as Och. By contrast, I accept that some consumers will read OCH in “OCH Capital” as O-C-H. I do not accept, however, that all consumers would read it that way. This is for three reasons.

First, the human eye has a tendency to see what the brain expects it to see. Thus I consider that some consumers will tend to read “OCH Capital” as “Och Capital” because of their knowledge of Och-Ziff and Mr Och.

Secondly, there is nothing in the context of OCH Capital’s use to make consumers think that OCH is an acronym. If, for example, the sign “OCH Capital” were used in conjunction with, say, the sign “Ocean Clearing House”, then consumers would understand that OCH should be read as O-C-H because it was an acronym. OCH Capital does not do this, because OCH is not an acronym. I consider that even consumers who noticed that OCH Capital’s Chief Executive was called Ochocki would be unlikely to appreciate the derivation of the name OCH Capital without it being explained to them unless they were personally acquainted with Mr Ochocki.

Thirdly, OCH Capital’s own disclosure demonstrates that a Google search for “Och capital” in May 2010 found OCH Capital as the first, second, sixth and eighth hits, the remaining top ten hits being for Och-Ziff. As Geoffrey Hobbs QC has cautioned on more than one occasion, one cannot simply adopt the approach of a search engine to the question of likelihood of confusion; but it does not follow that search engine evidence is irrelevant. In the present case the Google search results confirm that someone looking for Och-Ziff may find OCH Capital because the search engine is case insensitive. Most users of search engines are aware of this characteristic, but nevertheless there is a clear risk in the circumstances of the present case that this will be a source of confusion.

Again, therefore, I conclude that OCH Capital’s use of each of signs (2)-(6) falls within Article 9(1)(b) and thus amounts to an infringement subject to OCH Capital’s defence under Article 12(a) considered below.

Since I have concluded that Och-Ziff succeeds under Article 9(1)(b), I shall deal with its alternative claim under Article 9(1)(c) slightly more briefly than I otherwise would. For this purpose I shall assume, contrary to what I have found above, that there is no likelihood of confusion.

In Case C-292/00 Davidoff & Cie SA v Gofkid Ltd [2003] ECR I-389 and C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537 the Court of Justice held that, notwithstanding the wording of the Article referring to goods or services which are not similar to those for which the mark is registered, this form of protection also extends to cases where a sign which is identical with or similar to the trade mark is used in relation to goods or services identical with or similar to those covered by the trade mark.

The first requirement is that the Trade Mark has a reputation. This is not a particularly onerous requirement: see Case C-375/97 General Motors Corp v Yplon SA [1999] ECR I-5421 at [24]. Moreover, although the mark must be known by a significant part of the relevant public in a substantial part of the territory of the European Union, in an appropriate case the territory of a single Member State may suffice for this purpose: see Case C-301/07 PAGO International GmbH [2009] ECR I-9429. In my judgment this requirement is satisfied in the present case.

The next requirement is that the use of the signs complained of gives rise to a “link” with the Trade Mark in the mind of the average consumer as explained in Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd [2008] ECR I-8823. In my judgment this requirement is satisfied in the present case since the signs will remind the consumer of the Trade Mark.

Finally, it is necessary for Och-Ziff to establish the existence of one of three kinds of injury, which were described by the Court of Justice in L’Oréal v Bellure as follows:

“37.

The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade marks with a reputation (see, to that effect, Intel Corporation, paragraphs 31 and 32).

38.

Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27).

39.

As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29).

40.

As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.

41.

As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.

42.

Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28).”

So far as unfair advantage is concerned, Lloyd LJ in Whirlpool interpreted the Court of Justice’s judgment in L’Oréal v Bellure as follows:

“112.

Thus, the issue raised by Jacob L.J. at para.91 of his judgment in L'Oréal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party.

….

136.

… It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oréal v Bellure. No additional factor has been identified in this case other than intention.

137.

The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in para.79 of the Court's judgment. As Advocate General Sharpston said at para.65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. The Board of Appeal in Mango also said that unfair advantage is the more likely where there is greater similarity of goods as well as where the mark is more distinctive, but that was a case where the mark was identical, and strongly distinctive, and the goods were not the same but they were in an associated or overlapping field. The Court in L'Oréal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel.”

The importance of intention was emphasised by Jacob LJ, with whom Wall and Rimer LJJ agreed, when L’Oréal v Bellure returned to the Court of Appeal [2010] EWCA Civ 535, [2010] RPC 23 at [49]:

“So far as I can see this is saying if there is ‘clear exploitation on the coat-tails’ that is ipso facto not only an advantage but an unfair one at that. In short, the provision should be read as though the word ‘unfair’ was simply not there. No line between ‘permissible free riding’ and ‘impermissible free riding’ is to be drawn. All freeriding is ‘unfair.’ It is a conclusion high in moral content (the thought is clearly that copyists, even of lawful products should be condemned) rather than on economic content.”

I do not understand Jacob LJ to have ruled out the possibility that the unfairness of the advantage may be established by some factor other than intention, however.

Och-Ziff’s pleaded case on unfair advantage is as follows:

“The First Defendant has unfairly obtained a benefit by reason of a transfer of the image of the Trade Mark or of the characteristics which it projects (including the expertise and reputation of Daniel Och) to the services identified by the sign under which First Defendant trades. Further, there is a risk of consumers being initially or momentarily confused, whereby they may investigate or consider the First Defendant’s services. (For the avoidance of doubt, the Claimants will contend that the foregoing in any event constitutes a likelihood of confusion but additionally or alternatively the Claimants will rely upon the same as affording the First Defendant an unfair advantage.) Still further, such use by the First Defendant unfairly forecloses the future options of the Claimants and/or Daniel Och in respect of trading under a name comprising the word OCH and/or capitalizing upon the reputation therein.”

Och-Ziff do not allege that OCH Capital is intentionally taking advantage of the reputation of the Trade Mark. I shall ignore the reliance on initial interest confusion since I have held that that is actionable under Article 9(1)(b), but for this purpose I am assuming that Och-Ziff have failed under Article 9(1)(b). Absent any likelihood of confusion, in my judgment there is no evidence to support the claim of a transfer of image. Even if there is a foreclosing of the options of Och-Ziff (or Mr Och), I cannot see how that amounts to Och-Ziff taking advantage of the Trade Mark’s reputation, let alone unfair advantage.

Och-Ziff’s pleaded case on damage to the reputation of the Trade Mark (“tarnishing”) is as follows:

“The First Defendant’s use of the sign under which it trades will cause tarnishment, and/or degradation of the repute of the Trade Mark in the mind of the relevant public. There is a serious likelihood that the First Defendant’s financial services will be less successful than the consistently successful financial services of the Och-Ziff group; and accordingly the First Defendant’s services may be perceived by the public in such a way that the Trade Mark’s power of attraction is reduced. Further, the use by the First Defendant of the name and sign under which it trades is such as to imply that the financial services of Daniel Och may be obtained other than through the Och-Ziff group, contrary to the fact, thereby causing detriment to the Claimants’ reputation in the Trade Mark.”

Absent any likelihood of confusion, in my judgment there is no evidence to support the claim that the reputation of the Trade Mark will be adversely affected even if OCH Capital is less successful than the Och-Ziff Group.

So far as damage to the distinctive character of the Trade Mark (“blurring”) is concerned, the Court of Justice held in Intel inter alia as follows:

“69.

As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the Court has already held that the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that detriment has been caused to it (see, regarding Article 5(2) of the Directive, General Motors, paragraph 30).

 …

74.

However, the more ‘unique’ the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character.

75.

Secondly, a first use of an identical or similar mark may suffice, in some circumstances, to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future.

76.

Thirdly, as was stated on paragraph 29 of this judgment, detriment to the distinctive character of the earlier mark is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.

77.

It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.”

Och-Ziff’s pleaded case on blurring is as follows:

“The First Defendant’s use of the sign under which it trades will cause blurring and/or degradation of the distinctive character of the Trade Mark in the mind of the relevant public. The Trade Mark (including the OCH element thereof) is highly distinctive and unusual, and its ability to identify the services for which it is registered will be weakened, since use of such name and sign by the First Defendant will lead to dispersion of the identity and hold upon the public mind of the Trade Mark. The Trade Mark arouses immediate association with the services for which it is registered and the expertise and reputation of Daniel Och, but the First Defendant’s acts are liable to jeopardize its future capability of doing so.”

In my view this represents Och-Ziff’s best case under Article 9(1)(c). If Och-Ziff were in a position to advance this case in relation to the OCH Trade Mark, they might well succeed. As noted above, the evidence is that, leaving aside OCH Capital, no-one other than Och-Ziff is known by the trade marks Och or O-C-H for financial services, and in particular investment services. In these circumstances, it is arguable that OCH Capital’s use of signs (2)-(6) in relation to such services would be likely to reduce the distinctiveness of the OCH Trade Mark in that field. Would there be a change in the economic behaviour of relevant consumers? Mr Lawson said that business could be gained or lost on the basis of telephone conversations, and I have already quoted his evidence about how Och-Ziff are referred to in dealing rooms. In these circumstances, it might be proper to infer that a change in the economic behaviour of relevant consumers was likely, since consumers would not be able to identify Och-Ziff so immediately by the OCH Trade Mark. During closing submissions, however, counsel for Och-Ziff abandoned Och-Ziff’s claim for infringement of the OCH Trade Mark under Article 9(1)(c). In my view he was right to do so, since the evidence does not establish that the OCH Trade Mark has a sufficient reputation for this purpose.

The question, therefore, is whether Och-Ziff can maintain this claim in respect of the OCH-ZIFF Trade Mark. In my judgment there is no evidence that use of signs (2)-(6) will reduce the distinctiveness of the OCH-ZIFF Trade Mark in the field of investment services assuming that there is no likelihood of confusion including initial interest confusion. Although I have found that the OCH element has an independent distinctive role in the OCH-ZIFF Trade Mark, the ZIFF element also has an independent distinctive role. A reduction in the distinctiveness of OCH will not affect the distinctiveness of ZIFF. In these circumstances it cannot be assumed that the distinctiveness of the combination will be reduced, and there is no evidence that it will be. Nor is there any evidence from which I consider that it would be proper to infer a change in economic behaviour on the part of consumers.

Counsel for the Defendants conceded that, if OCH Capital’s uses otherwise fell within Article 9(1)(c), they were “without due cause”. For the reasons I have given, however, I conclude that they are not caught by Article 9(1)(c) if it is assumed that there is no likelihood of confusion.

OCH Capital contends that, even if any of its uses of the signs in question fall within Article 9(1), it has a defence to the infringement claims by virtue of Article 12(a).

I considered the law at some length in Cipriani at [166]-[193]. On appeal, the Court of Appeal held that the defence could be invoked in respect of a trading name, but agreed the defendants’ use in that case was not in accordance with honest practices in industrial and commercial matters. Counsel for Och-Ziff submitted that the judgment of the Court of Appeal did not affect the validity of my analysis of the law as to the latter point at [142]-[152]. Counsel for the Defendants did not argue to the contrary, but rather submitted that the present case was distinguishable from Cipriani on the facts.

In my judgment OCH Capital’s use of signs (2)-(6) has not been in accordance with honest practices in industrial and commercial matters for the following cumulative reasons. For brevity, I shall refer in these reasons to the signs simply as OCH.

First, despite a denial in the Defence, Mr Ochocki admitted in his evidence that he had been at least vaguely aware of the existence of Och-Ziff before he had set up OCH Capital. Furthermore, he also admitted that he had seen Och-Ziff Management’s name on the companies register when he had registered OCH Capital, and that as a result he had looked at Och-Ziff’s website. Mr Ochocki relied on the fact that Companies House had advised him that he could register the name OCH Capital, but the guidance published by Companies House explicitly recommends that those forming companies and limited partnerships should check the Trade Marks Register to ensure that the proposed name does not infringe an existing trade mark. In cross-examination Mr Ochocki said for the first time that he recollected a conversation with Mr Saunders or his accountant in which “they said to me there is no trade mark OCH, we can use OCH”, but he was unable to say whether any trade mark search had been carried out, or if so its terms. No search has been disclosed. In my view Mr Ochocki should have carried out a trade mark search. If he had done so, he would have found the OCH-ZIFF Trade Mark. If he had found the OCH-ZIFF Trade Mark, I think that Mr Ochocki should and would have appreciated the need for legal advice. There is no evidence that any legal advice was obtained at that stage. (Nor has any legal advice obtained subsequently been disclosed.)

Secondly, Och-Ziff objected to OCH Capital’s use of OCH on 20 October 2009. This was very shortly after OCH Capital started trading, and at a time when its website was still under construction and its brochure had not yet been printed. Thus OCH Capital’s use of OCH had barely started. It would therefore have been relatively easy for it to change or least modify its name at that stage. Despite this, OCH Capital carried on using OCH. It did not even change to O.C.H.

Thirdly, the use in question includes use as the trade mark under which OCH Capital provides its services. It is thus what Jacob LJ described in Reed as “upfront in-your-face” trade mark use. It is not restricted to a mere formal identification of a company name. I remain of the view that the latter kind of use will more readily be protected by Article 12(a) than the former.

Fourthly, I consider that, if Mr Ochocki had properly addressed his mind to the question, he would have appreciated that there was at least a risk of confusion, particularly as a result of OCH Capital’s promotional activities.

Fifthly, during the course of the proceedings Mr Ochocki will have become aware that there was evidence of actual confusion.

Sixthly, I consider that, if Mr Ochocki had properly addressed his mind to the question, he would have appreciated that Och-Ziff had a legitimate interest in preserving its exclusivity in OCH in relation to financial services, and in particular investment services.

Seventhly, there is no evidence that Mr Ochocki re-considered the position once Och-Ziff Management had registered the OCH Trade Mark. If he had, he would have been bound to appreciate that this strengthened Och-Ziff’s position, and correspondingly imposed a heavier burden on OCH Capital to discharge in order to act fairly in relation to the legitimate interests of the trade mark proprietor. In this connection, it should be noted that counsel for the Defendants accepted that per se it was not a defence to a claim for infringement that the use complained of started before the trade mark was registered or even applied for. Rather, he submitted that this was a relevant factor in the Article 12(a) analysis. That I accept, but in the present case OCH Capital had only started use shortly before the OCH Trade Mark was applied for. Furthermore, the OCH Trade Mark was applied for after Och-Ziff had complained to OCH Capital and just before it commenced proceedings against OCH Capital for infringement of the OCH-ZIFF Trade Mark.

Eighthly, I do not consider that OCH Capital had sufficient justification for continuing to use OCH after Och-Ziff complained. As I have already noted, OCH Capital was a new limited partnership which had only just started trading when the complaint was first made. Although I have accepted Mr Ochocki’s evidence as to the reasons for his choice of the name OCH Capital, I do not consider that those reasons are compelling ones for continuing to use that name in the face of Och-Ziff’s complaint. After all, OCH is neither Mr Ochocki’s actual name nor an acronym. Furthermore, OCH Capital had not built up any significant reputation or goodwill in the name at that point in time.

Overall, I consider that OCH Capital has not discharged its duty to act fairly in relation to the legitimate interests of Och-Ziff and that its use of the signs complained of amounts to unfair competition with Och-Ziff. Accordingly, the defence under Article 12(a) is not made out.

Since I have upheld Och-Ziff’s claims for trade mark infringement, I shall deal with the claim for passing off relatively briefly. The necessary elements for a claim in passing off were restated by the House of Lords in Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 as follows:

The relevant date as at which these matters fall to be assessed is the date when the defendant commenced the acts complained of, here September 2009.

There is no dispute that Och-Ziff own a substantial reputation and goodwill in the name “Och-Ziff”. As noted above, they are also known to some extent simply as “Och”. Mr Cohen and Mr Lawson also gave evidence that Och-Ziff Management was sometimes referred to as “Och-Ziff Capital”. Furthermore, there are other entities within the Och-Ziff Group whose name includes the word “Capital”.

In my judgment OCH Capital’s use of the signs complained of gives rise to a misrepresentation for similar reasons that I have given in relation to the claim for infringement of the OCH-ZIFF Trade Mark under Article 9(1)(b). It is true that in passing off there is no limit on the relevant circumstances, but I do not accept that it follows that initial interest confusion is not actionable.

This question is considered by Professor Wadlow in The Law of Passing Off: Unfair Competition by Misrepresentation (3^rd ed) at §§5-22 to 5-24 and 7-37 to 7-40. As he says at §7-39 (footnotes omitted):

“In the absence of better express modern authorities switch selling has to be approached from basic principles. First, Spalding v Gamage decided that there can be passing off with liability for substantial damages merely by advertising goods for sale, even if none are in fact sold. Secondly, the basis of passing off is a misrepresentation causing damage to the claimant’s goodwill and there are few a priori limits on what the misrepresentation may be or how the damage may arise: the case in which the defendant's goods are sold as and for the goods of the claimant is now recognised as no more than a special instance of a more general rule. In deliberate switch selling there is necessarily a misrepresentation and the question ought therefore to be whether it is material in the sense that damage arises from it.

‘[A] representation made by advertisements that the articles sold at a particular shop are articles manufactured by A.B. (if that is the legitimate effect of the advertisements, which is a separate question) must, in my opinion, be as imperious in principle and may possibly be quite as injurious in operation, as the same representation made upon the articles themselves.’

The success of switch selling as a business practice depends on a potential customer for the claimant’s goods being sold the defendant’s by a process in which the making of the misrepresentation is an essential step, and damage may therefore be said to arise from the misrepresentation even though the customer has ceased to be misled by the time the transaction is concluded. The general principle is that if the defendant successfully induces the public to do business with him by making a misrepresentation then it ought not to matter that the falsity of the representation would become apparent at some stage. …”

I agree with this analysis. Furthermore, in my view the points made by Professor Wadlow in the first and last sentences of this passage hold good even if the misrepresentation is innocent rather than deliberate.

Counsel for the Defendants submitted that, even if there was a misrepresentation, there was no damage to Och-Ziff since OCH Capital was not in direct competition with Och-Ziff; and that, both for that reason and because any confusion would be dispelled by the time of a contract, Och-Ziff would not suffer any diversion of trade. I do not accept this argument for two reasons.

First, it is well established that, even in the absence of competition and hence diversion of sales, a misrepresentation leading to the belief that the defendant’s business is associated with the claimant’s is damaging to the claimant’s goodwill. Secondly, it is also well established that, if there is a misrepresentation which erodes the distinctiveness of the indication in question, then that is damage for the purposes of a claim in passing off. As noted above, both of these points were well explained by Laddie J in Irvine, in particular in the following passages:

“34.

Expressed in these terms, the purpose of a passing-off action is to vindicate the claimant's exclusive right to goodwill and to protect it against damage. When a defendant sells his inferior goods in substitution for the claimant's, there is no difficulty in a court finding that there is passing off. The substitution damages the goodwill and therefore the value of it to the claimant. The passing-off action is brought to protect the claimant's property. But goodwill will be protected even if there is no immediate damage in the above sense. For example, it has long been recognised that a defendant cannot avoid a finding of passing off by showing that his goods or services are of as good or better quality than the claimant's. In such a case, although the defendant may not damage the goodwill as such, what he does is damage the value of the goodwill to the claimant because, instead of benefiting from exclusive rights to his property, the latter now finds that someone else is squatting on it. It is for the owner of goodwill to maintain, raise or lower the quality of his reputation or to decide who, if anyone, can use it alongside him. The ability to do that is compromised if another can use the reputation or goodwill without his permission and as he likes. Thus Fortnum & Mason is no more entitled to use the name F W Woolworth than F W Woolworth is entitled to use the name Fortnum & Mason.

35.

The point is particularly clearly demonstrated by the so-called ‘champagne’ cases, in which the claimants share a reputation in the name under which their type of wine is sold. In such cases a defendant would not escape liability for use of the name ‘champagne’ on a beverage which is not authentic French champagne by showing either that his product was as good or better than the claimant's or that he had not diverted any measurable sales from them. One type of damage which can support the modern form of passing-off action was explained in just such a case: Taittinger SA v Allbev Ltd [1993] FSR 641. …

38.

… If someone acquires a valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by other parties. Such use will frequently be damaging in the direct sense that it will involve selling inferior goods or services under the guise that they are from the claimant. But the action is not restricted to protecting against that sort of damage. The law will vindicate the claimant's exclusive right to the reputation or goodwill. It will not allow others to so use goodwill as to reduce, blur or diminish its exclusivity. It follows that it is not necessary to show that the claimant and the defendant share a common field of activity or that sales of products or services will be diminished either substantially or directly, at least in the short term. Of course there is still a need to demonstrate a misrepresentation because it is that misrepresentation which enables the defendant to make use or take advantage of the claimant's reputation.”

In my judgment both of these types of damage are likely in the present case. The first requires no elaboration. As to the second, I consider that Och-Ziff can rely upon erosion of distinctiveness even though I have not accepted their Article 9(1)(c) claim, for two reasons. First, because in this context I have found that there is a misrepresentation as to trade origin. Secondly, because in this context I consider that Och-Ziff are in a better position to rely upon goodwill in, and damage to, the OCH element of their various names.

Och-Ziff contends that Union is jointly liable with OCH Capital as a joint tortfeasor. I reviewed the relevant law in L’Oréal SA v eBay International AG [2009] EWHC 1094 (Ch), [2009] RPC 21 at [343] to [352]. Neither counsel questioned the accuracy of that account.

In the present case it is necessary to consider the position prior to and from March 2010 separately.

So far as the position prior to March 2010 is concerned, Counsel for Och-Ziff relied primarily on the agreement dated 8 April 2009. As is common ground, this was made pursuant to section 39 of the FSMA, which provides:

“(1)

If a person (other than an authorised person)—

(a)

is a party to a contract with an authorised person (‘his principal’) which—

(i)

permits or requires him to carry on business of a prescribed description, and

(ii)

complies with such requirements as may be prescribed, and

(b)

is someone for whose activities in carrying on the whole or part of that business his principal has accepted responsibility in writing,

he is exempt from the general prohibition in relation to any regulated activity comprised in the carrying on of that business for which his principal has accepted responsibility.

…

(2)

A person who is exempt as a result of subsection (1) is referred to in this Act as an appointed representative.

(3)

The principal of an appointed representative is responsible, to the same extent as if he had expressly permitted it, for anything done or omitted by the representative in carrying on the business for which he has accepted responsibility.”

Counsel for the Defendants submitted, and Counsel for Och-Ziff accepted, that section 39(3) did not have the effect that the principal was responsible for unrelated torts committed by an appointed representative e.g. negligently causing a car accident. Counsel for Och-Ziff submitted, however, that it does have the effect that the principal is liable for torts committed by the representative in the course of doing the things for which the principal has accepted responsibility under the contract in question.

In the present case, the agreement includes the following provisions:

“2.2

The Principal hereby accepts responsibility for the activities of the Representative in providing the Services.

3.1

The Principal appoints the Representative to carry on the business of providing the Services (as defined in clause 3.2) to Clients. For these purposes, ‘Clients’ means any professional client or eligible counterparty (as such terms are defined in the FSA rules) with or for which the Representative conducts or intends to conduct the Services.

3.2

The services to be provided by the Representative are the following Regulated Activities (the ‘Services’):

(A)

the activity of arranging (bringing about) deals in investments for clients;

(B)

the activity of making arrangements with a view to transactions in investments;

(C)

the activity of advising on investments (except on Pension Transfers and pension Opt Outs); and

(D)

the activity of agreeing to carry on any of the above activities.

3.3

The Representative shall be permitted to make or direct communications which are financial promotions (within the meaning of the FSA Rules) to Clients, provided such communications relate to no Regulated Activity other than those contained within the definition of Services and the issuing of financial promotions shall accordingly be included in the definition of ‘Services’.”

Counsel for Och-Ziff submitted, and I agree, that it follows from this that Union accepted responsibility for OCH Capital’s provision of the Services, and in particular the making of financial promotions. He further submitted, and I agree, that, since the financial promotions were made under and by reference to the signs complained of, it follows that Union was responsible for them. Thus, to use the language of Peter Gibson LJ in SABAF SpA v Meneghetti SpA [2002] EWCA Civ 976, [2003] RPC 14 at [59], Union made those acts its own.

As to the position from March 2010, this is a fortiori. As noted above, Mr Ochocki’s evidence was that he agreed to purchase Union in March 2010. From that point onwards, there has been a close overlap in personnel between OCH Capital and Union. It is apparent from Mr Ochocki’s evidence that, although the two remained legally distinct, they have operated as a single, seamless operation.

Accordingly, I conclude that Union is jointly liable with OCH Capital.

Counsel for the Defendants conceded that Mr Ochocki was jointly liable for any infringement or passing off committed by OCH Capital.

For the reasons set out above, I conclude that: