Lewis v Client Connection Ltd.

The claimant, Martin Lewis, is the proprietor of two UK registered trade marks; the registered mark in each case is “Money Saving Expert” (the first filed on 2 December 2004, and the second on 9 October 2007, and both relating to “advisory services relating to financial matters provided via an internet website”). The claimant operates a website using the name “moneysavingexpert.com”. The website contains advice and template letters to enable the website users to reclaim monies for (amongst other things) mis-sold payment protection insurance. The Particulars of Claim allege (and a statement of truth signed by the claimant’s solicitor proves) that by September 2010 these had been downloaded by users some 967,000 times.

The Particulars of Claim also allege that the registered marks (and each of them) have a reputation in the United Kingdom. In the Defence which has been filed this allegation is admitted: but the defendant, Client Connection Limited (“CCL”), has made an application to amend its Defence to withdraw the admission. In the course of the hearing before me Counsel for CCL (Mr Turner) made clear that it was not intended to put the reputation of the registered marks in issue generally, and that it was admitted that the registered marks did have a reputation (but subject to the question of whether the registered marks were validly so registered).

CCL operates a telephone based claims management business dealing with (amongst other things) claims arising out of mis-sold payment protection insurance. Until September 2010 it operated under the name “Money Claiming Experts”. The claimant says that in the course of that business it made or caused to be made telephone calls in which it held itself out as “Money Saving Expert” or was heard to describe itself as such. This is alleged to be an infringement of the claimant’s registered marks.

On 15 December 2010 the claimant applied for summary judgment in his favour under CPR Part 24. Under agreed directions for the filing of evidence the claimant’s evidence in support of the application was regarded as complete, CCL had the opportunity to file evidence in answer by 31 January 2011, and the claimant had the opportunity to serve evidence in reply by 14 February 2011. On 25 February 2011 CCL applied to amend its Defence and to mount a Counterclaim (the latter challenging the validity of the registration of the claimant’s marks). These two applications are before me for determination.

At the outset there was a dispute as to the material by reference to which I should determine the applications. The claimant is not an expert at complying with Court orders and on 2 June 2011 (less than a week before the hearing) served evidence which was either late or for which he had no permission. CCL, however, rejected the offer of an adjournment, and said that I must decide either to admit or entirely to exclude this evidence. Having ascertained what material CCL would have wished to adduce in response to this late evidence, and that it was in fact available in court in the form of CD recordings, I decided to admit the evidence and to give permission to CCL to introduce that additional material.

I will deal first with the legal structure of the claim, then with the legal tests to be applied on the applications, and will then apply those tests to see whether judgment may properly be given having regard to the original and to the proposed amended Defence on the claims so advanced.

The legal structure of the claim is three fold.

First, there is a claim for infringement under Section 10(1) of the Trade Marks Act 1994 (“TMA 1994”). To succeed under this head the claimant must prove that the sign used by CCL is identical with the claimant’s registered marks and was used in relation to identical services. Of course, “Money Saving Expert” is visually distinct from “Money Claiming Experts”. But CCL contacts its potential customers by telephone and the relevant perception of the mark is at that stage purely aural: the issue is accordingly one of aural identity. What is meant by “identity” was considered by the Court of Justice in LTJ Diffusion [2003] ETMR 83. Taking the relevant parts of paragraphs [50] and [54] of the judgment (which refer to the relevant article in the Trade Mark Harmonisation Directive 89/104) the approach is as follows:-

“The criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition of identity implies that the two elements compared should be the same in all respects. …Article 5(1)(a) of the Directive must be interpreted as meaning 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”.

Second, the claimant says that there is infringement under Section 10(2) TMA 1994. To succeed under this head the claimant must establish that CCL’s sign is similar to his registered marks and is used in relation to the services which are similar to those for which the trade mark is registered, and that by reason of that circumstance there exists a likelihood of confusion on the part of the public (including the likelihood of association with the claimant’s registered mark).

By reference to whom is confusion to be assessed? By reference to the average consumer who is deemed to be reasonably well informed and reasonably observant and circumspect, but taking into account the fact that such an average consumer will only rarely have the chance to make a direct comparison between the different marks, but must place his or her trust in the imperfect picture of them kept in the consumer’s mind: see Lloyd Schuhfabrik [1999] ETMR 690 at paragraph [26].

By what process is the likelihood of confusion established? That question is also answered by the Lloyd Case which refers (at paragraph [18]) to the relevant case law as establishing the principle that likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case.

I have been reminded of (and bear in mind) the convenient collection of relevance considerations contained in paragraph [73] of the judgment of Arnold J in Och-Ziff v OCH Capital [2010] EWHC 2599. But however much one elaborates on the factors and refines and articulates the process of analysis to which those factors are subjected, it is wise to bear in mind the observation of Jacob LJ in Reed Executive v Reed Business Information Limited [2004] RPC 40 at paragraph 82 to the effect that:-

“Whichever approach one uses, one is essentially doing the same thing – forming an overall (“global”) assessment as to whether there is likely to be significant consumer confusion. It is essentially a value judgment to be drawn from all the circumstances. Further conceptual over-elaboration is apt to obscure this and is accordingly unhelpful”.

I must, however, note that amongst those factors is the consideration that the more distinctive the registered mark then the greater will be the likelihood of confusion, so that marks with a highly distinctive character (either per se or because of the recognition they possess in the market) enjoy broader protection than marks with a less distinctive character: (L’Oreal SA Case C-235/05 at paragraph [36]).

The third way in which the claimant advances his claim is under Section 10(3) TMA 1994. To succeed under this head the claimant must establish that CCL has used in the course of its trade a sign which is similar to the registered marks, that the registered marks have a reputation, that the use of the sign is without due cause, and that the use takes unfair advantage of or is detrimental to the distinctive character or repute of the claimant’s registered marks.

Although not spelt out in Section 10(3) TMA 1994 there is an inherent requirement that the relevant public should make “a link” between the alleged infringing sign and the registered mark. As was explained in paragraph [36] of the judgment in L’Oreal(supra) the infringements referred to in paragraph 10(3) TMA 1994 do not require such a degree of similarity between (a) the alleged infringing sign and (b) the registered mark with a reputation, that there exists a likelihood of confusion between them: it is sufficient for the degree of similarity between the two to have the effect that the relevant section of the public establishes “a link” between the alleged infringing sign and the registered mark with a reputation (the existence of such a link being a necessary but not of itself a sufficient condition). My attention was also drawn to paragraph [38] ff in the L’Oreal judgment which identify the relevant types of injury against which Section 10(3) provides protection as being

So much for the structure of the claim. The jurisdiction I am being asked to exercise is that arising under CPR Part 24. It is not necessary to recite either the familiar terms of the Rule or to traverse the body of authority and comment which now surrounds it. It suffices for the purposes of this judgment to say that I have considered the summary of principles contained in the judgment of Roth J in Vaseeharan v Uthayaranjan [2010] EWHC 1083 at paragraph [14]. I would, however, specifically record (because it was a theme to which he constantly returned) my acceptance of Mr Turner’s submission that the function of Part 24 is not to provide a summary trial and a quick result in a case which a claimant would probably win even after a full trial. The question is only whether the defence has a “real” (as opposed to a fanciful) prospect of success. The procedure is designed for cases which are not suitable for trial because they turn on issues which are susceptible of disposal at an early stage (thereby saving the cost and delay of trying issues the outcome of which is inevitable). Properly deployed the procedure:-

I turn to apply the relevant principles to the issues arising in this case. They fall to be applied in the context where both the existing Defence and the proposed Amended Defence and Counterclaim in large part advance no positive case but simply put the claimant to proof. Accordingly, as matters stand, save for certain telephone recordings which CCL has disclosed (arising from the case pleaded by the claimant) CCL will not itself be adducing evidence but will be attacking the evidence which is adduced by the claimant.

First, the claimant’s case under Section 10(1) TMA 1994. I would refuse summary judgment under this head for the following reasons:-

I turn to the case under Section 10(2) TMA 1994. The claimant alleges that CCL uses a sign similar to the claimant’s registered mark in connection to services that are similar and that there is a likelihood of confusion. He relies on unprompted calls to consumers who heard CCL’s contracted call centre operatives introduce themselves as “Money Saving Expert” (even if the operatives were actually saying something different). In the Particulars of Claim he identifies calls (a) to Ms Donaghy, Mr Ripley and to Ms Wright: (b) to Ms Knights and Mrs Scott: (c) to Mr Fallon: and (d) to Ms Cheney (otherwise “Barton”). In evidence he also identified calls to Mr Addy, Mr Worsdale and to Mr McNeil. In its Defence CCL admits using the trading name “Money Claiming Experts” when proactively marketing its PPI reclaims service until 31 August 2010, but it denies that this is similar to the claimant’s registered marks or that there is a likelihood of confusion on the part of the public: and it does not admit making the unprompted calls identified in the Particulars of Claim.

On this application I received witness statements from Mr Addy, Mrs Scott, Ms Knights, Mr McNeil and Ms Barton: there were in evidence emails contemporaneous with the relevant events from Mr Addy, Mrs Scott, Ms Knights, Mr McNeil, Ms Barton, Mr Fallon, Mr Worsdale, Mr Ripley, and Mrs Wright: and I was able to listen to recordings (complete or partial) of telephone conversations with Ms Knights, Mr McNeil, Mrs Scott, Mr Addy and Mr Fallon. In its Defence CCL pleaded that it had in fact made 500,000 telephone calls as part of its campaign and that it intended to provide a random selection of telephone recording: but in the evidence which it filed in February 2011 it did not in fact do so. In the absence of that positive evidence the question on this application is whether the evidence adduced by the claimant is sufficient to prove his case and whether there is a real prospect that CCL will by cross examination (or the adduction of other evidence which I can now properly speculate will be adduced at trial although not adduced at this hearing) prevent the claimant establishing on the balance of probabilities (a) that the name used by CCL is similar to the claimant’s registered mark and (b) that there is a likelihood of confusion (it being accepted that the services provided by the claimant and CCL are similar).

There is no real prospect of CCL undermining the witnesses by saying that they are deliberately lying when they say that what they heard when CCL’s callers introduced themselves was that the call was from “Money Saving Expert”: the witnesses all immediately contacted the claimant with an enquiry or complaint. So the focus of the attack would be that the witnesses were people who were (as Jacob LJ pithily observed in one case) careless or stupid (i.e. not reasonably well informed, reasonably observant and circumspect).

Mr Turner made the following points:-

The first step is to look at this evidence and consider whether (if unchallenged) it is sufficient to prove the claimant’s case under this head. In my judgment it is: and I consider that CCL must accept as much because, as Mr Turner himself pointed out, CCL made no application to strike out the claim and no application for summary judgment in its favour.

The next question is to consider whether (taking into account such additional evidence as one can sensibly anticipate maybe available at trial) the claimant has demonstrated that there is no real prospect of shaking this evidence to the extent that it introduces a real doubt (not one that is fanciful) as to the outcome of the case. The threshold permitting the case to go forward is low, because it is not my function at this stage to embark upon a mini trial. But in my judgment the claimant has demonstrated that the threshold cannot be crossed. Taking all of Mr Turner’s points together I still do not consider that this is a case fit for trial. I accept that what follows is something of a caricature: but in essence the points amount to no more than speculation that if there was a trial then something might turn up which might paint a different picture. Criticism of the content of the statements seems to me to be beside the point when there are recorded telephone conversations and contemporaneous emails. I have heard the conversations and (save in the case of the McNeil recording) what I have heard (and what a trial judge would hear) must weigh with me and inform the value judgment which I have to make. “Money Saving Expert” is a “name” known in the market which it is conceded (subject to the question of validity) has a reputation. The potential customer receives an unprompted telephone call for which the recipient is not prepared. The caller is identified at the very outset of the call. As the recordings demonstrate, sometimes the caller speaks clearly, and sometimes not. As the Scott conversation demonstrates, even the caller can mishear the name of the organisation for which he works. It has not been (and cannot be) suggested that these witnesses are lying when they say that (whatever the caller said) they thought they heard the caller identify himself or herself with “Money Saving Expert”. The recipients of the calls have heard of “Money Saving Expert” and it is no surprise if (without the ability to effect a direct comparison and relying upon their recollection) they interpret the sounds down the telephone line as meaning that - exactly as the CCL operative thought Mrs Scott was referring to “Money Claiming Experts”. Unless those who are telephoned themselves cross-check it that is all they hear of the caller’s identity: the operative immediately embarks on a series of questions requiring a response, questions of a personally probing nature such that the recipient’s attention will be focussed on deciding whether to answer or not (“Who provides your credit card? What is the limit? How much is outstanding now? What is your bank? Do you have an overdraft? How much?”). That evidence suffices to show a likelihood of confusion, unless there is something other than pure speculation to suggest that these witnesses may have been careless or stupid (and might be shown to be so at trial). But there is not.

It is not to the point that there are some recipients of calls who are not, in the end, actually confused. The claimant does not have to show actual confusion. He has to demonstrate that there exists a likelihood of confusion on the part of the public (including the likelihood of association with the claimant’s registered marks). In my judgment that is demonstrated beyond real challenge. Nor is it to the point that the sample relied on by the claimant is small. The sample displays features which it may properly be inferred are generic to all calls made (aural similarity of a sign used once at the beginning of a “cold call” telephone conversation which appears to follow a scripted structure).

Mr Turner submitted that it was not demonstrated sufficiently, given that the mark which the claimant had selected was to some degree descriptive. I agree that the words “Money Saving Expert” are to some degree descriptive of the service provided: when the claimant’s marks were registered it was noted that they were “proceeding because of distinctiveness acquired through use”. Founding himself on Office Cleaning Services Limited v Westminster Window and General Cleaners Limited (1946) 63 RPC 39 Mr Turner submitted that where a trader adopts words in common use for his trade name some risk of confusion is inevitable, and that risk must be run unless the first user is allowed unfairly to monopolise the words. The consequence of this is that where a mark is largely descriptive small differences may suffice to avoid confusion, something which Jacob LJ described as a proposition of fact inherent in the nature of the public perception of trade marks: see Reed Executive Plc v Reed Business Information [2004] RPC 40 at paragraph [84]. But that consideration is counterbalanced by the fact that marks with a highly distinctive character (either per se or because of the recognition they possess in the market) enjoy broader protection than marks with a less distinctive character. In my judgment the claimant has demonstrated beyond real challenge that such is the level of distinctiveness of his use of the term “Money Saving Expert” over an eleven year period (sufficient to warrant the registration of his mark notwithstanding the degree to which it was descriptive) that there is no real prospect of a judge at trial finding that there was insufficient confusion.

Accordingly on that material I would give summary judgment in favour of the claimant under Section 10(2) TMA 1994. Mr Turner then took two points which he said he wished to introduce by amendment and which (if admitted as part of his case) would prevent such summary judgment being awarded.

In paragraphs 9 and 10 of the Defence CCL proposes to insert pleas that the operatives making the calls were employed or engaged by Cellcom Communications Limited (“Cellcom”) and that CCL did not cause, procure or authorise Cellcom to use “Money Saving Expert” as its name and was not party to such use. Such a plea would be a good plea in relation to a claim under section 10(1) TMA 1994: if the operatives used an identical name to the claimant’s registered mark then CCL could argue that they did so contrary to instructions. But the plea is not good in relation to the claim under section 10(2) where the complaint is that CCL used its own (but similar) name, which use occasioned a likelihood of confusion. The Cellcom operatives were doing precisely what they were instructed to do: but what they were instructed to do constituted an infringement.

Second, CCL wishes to raise a counter claim that the claimant’s registered marks are invalid because they are not capable of distinguishing the claimant’s services from those of other undertakings, they are devoid of any distinctive character and/or they are purely descriptive, and they have not in fact acquired a distinctive character as a result of the use made of them. Section 3(1)(b) TMA 1994 says that a mark shall not be registered if it is “devoid of any distinctive character”. Section 3(1)(c) TMA 1994 says that a mark shall not be registered if it consists exclusively of signs or indications which may serve to designate the kind or quality or other characteristics of services. A proviso to Section 3(1) TMA 1994 says that a mark shall not on either ground be refused registration if (before the date of application for registration) it has in fact acquired a distinctive character as a result of the use made of it. Both of the claimant’s marks were registered “because of distinctiveness acquired through use” i.e. under the proviso. On a claim for invalidity the burden lies on CCL to establish that the proviso was wrongly applied. If CCL succeeds in doing so the registration may nonetheless be maintained under Section 47 TMA 1994 if the claimant (who on this issue has the burden) establishes that after registration the marks have (by the time of the challenge to their validity) acquired a distinctive character for the services for which they registered.

In my judgment CCL falls at the first hurdle: there is no real prospect of it establishing that the proviso was wrongly applied at the time of registration. There is over one lever arch file of evidence relating to the claimant’s registration application: Mr Turner did not direct my attention to any part of it as demonstrating that there was no evidence on the basis of which the proviso could properly have been applied. He made the general submission that the evidence was directed at “use”, not at “distinctiveness”. On the other hand the claimant did draw my attention to five pieces of evidence specifically directed to distinctiveness and which could properly found registration. One witness said that “money saving expert” had been the term that best described the claimant and that he was the only person the witness thought of when she heard this term. Another said that “money saving expert” became synonymous with the claimant’s name and that he had written for various publications under that title. Another (a pundit on financial services) said that newspaper readers and TV audiences recognised that the claimant was “the money saving expert”. Another journalist said that the claimant was alone in using that tag. Another said that the name “money saving expert” denoted the claimant. I was shown nothing to undermine this evidence.

If I had felt that there was some doubt about whether the proviso to Section 3 TMA 1994 had been properly applied (so that the registration might have been invalid) I would have had no doubt that the registration would have been saved under Section 47 TMA 1994. The evidence filed on this application demonstrates, to my mind conclusively, that the witnesses identified the claimant (and no-one else) with the name “money saving expert” and felt that CCL was exploiting the claimant’s well built and trusted name.

In my judgment the amendments would not have strengthened CCL’s Defence and I would confirm that the claimant should have summary judgment under Section 10(2) TMA 1994.

That is sufficient to dispose of the case. If I had entertained any doubt about the outcome of a trial under the head of claim founded on section 10(2) TMA 1994 I would have been persuaded that the claimant would inevitably have succeeded under section 10(3) TMA 1994. I would have entertained no doubt that the claimant’s registered mark had a distinctive character and reputation at the date of the proceedings, with which anyone hearing the similar name “Money Claiming Experts” would have made a link. There was evidence (a) that for the twelve week period ending 3 January 2009 Martin Lewis, creator of the “consumer revenge” website “moneysavingexpert.com” was the most searched for personality by UK internet users: (b) that for a twelve week period spanning December 2010 to March 2011 some 11.3 million people visited the “money saving expert” website, with an average visit time of 5 minutes 45 seconds: and that 1.75 million of those visits included the claimant’s name in the keyword search. Furthermore the evidence of the witnesses on this application would have persuaded me that “Money Saving Expert” is distinctive of the claimant. When they thought that they were being cold called by “money saving expert” it was to the claimant and his website that the witnesses turned.

I would have gone on to hold (on the basis of the evidence of those witnesses) that the clear effect of the use by CCL of the trading name “Money Claiming Experts” was that, as a matter of fact, it was riding on the coat tails of the claimant’s registered mark and benefitting from its power of attraction, its reputation and its prestige - thereby gaining the attention of people to whom it made unprompted telephone calls and from whom it sought confidential information to enable it to sell its services: and that to suggest that there would be any other outcome at trial is fanciful. I would also have been satisfied that the association of the claimant and his website with fee-based claims management procured by cold calling customers would have tarnished the claimant’s mark.

As it is I give summary judgment for infringement under Section 10(2) TMA 1994 in the terms of the draft order at page 3 of the core bundle (save for the proposed paragraphs 6 and 7 upon which I will rule following oral submissions when I hand down judgment. I will do so on the earliest date Counsel are available.