Lewis v Client Connection Ltd.

Mr Justice Norris :

“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”.

“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”.

(a) detriment to the distinctive character of the registered mark (“dilution” or a weakening of the registered mark’s ability to identify the services as those of the proprietor of the mark): or

(b) detriment to the repute of the mark (“tarnishment” which reduces the power of attraction of the registered mark because it has a negative impact on the image of the registered mark): or

(c) taking an unfair advantage (sometimes called “free riding” or an exploitation of the reputation of the registered mark).

(a) Relieves the claimant of the necessity of incurring irrecoverable costs to prove at trial what can be established earlier:

(b) Allocates scarce resources to those litigants whose cases can only be determined at trial: and

(c) Protects the defendant from spending money on his own costs and from exposing himself to liability for the claimant’s costs on the trial of an issue the outcome of which it can already be seen he has no real prospect of avoiding.

17. 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.

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

(a) In paragraph 5 of Particulars of Claim the claimant alleges that CCL provides claims management services under the name “Money Saving Expert” and has used in the course of a trade a sign which is identical with the registered marks. In paragraph 5 of the Defence CCL does not admit introducing itself on the telephone as “Money Saving Expert” and denies authorising or promoting the use of the trading name “Money Saving Expert”. I have had the opportunity of listening to five recorded telephone calls. I consider there is a real prospect that the claimant will be unable to establish on the balance of probabilities that CCL used or authorised the use of the mark “Money Saving Expert” in connection with its business.

(b) As a variation on that case the claimant argued that if CCL did not actually use the mark “Money Saving Expert” it used a sign which (when heard over the telephone at the commencement of an unprompted “cold call” on the recipient) was aurally identical (“money…a…ing expert” quickly spoken) because it contained differences so insignificant that they would go unnoticed by the average reasonably well informed, reasonably observant and circumspect consumer. Whether a difference is so small as to permit identity or sufficiently large to constitute mere similarity is a somewhat metaphysical debate: and on a summary judgment application (and having heard the relevant telephone recordings) I would give the benefit of the argument to CCL.

(c) There is a real prospect of CCL establishing that in any event it does not use any sign in connection with services that are identical with those of the claimant. The claimant provides advisory services relating to financial matters via a website: CCL provides advice and claims management services over the telephone.

19. 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.

20. 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).

21. 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).

22. Mr Turner made the following points:-

(a) That there should be a trial to afford him the opportunity to demonstrate that the witnesses were careless or stupid.

(b) That a comparison of the witness statements with the telephone recordings (where the two co-exist) demonstrates that the witnesses are unreliable.

(c) That in the cases of Ripley, Donaghy and Wright there are no witness statements, but only emails, and whilst the dates of those emails do coincide with CCL’s marketing campaign, there is nothing other than that date to connect the calls of which the witnesses complain with CCL, and that this evidence ought to be disregarded: this submission I accept.

(d) Mr Worsdale complained at the beginning June 2010 that he had been receiving “phone calls claiming to be from [money saving expert]” which he identified as coming from CCL but said he was “sure these people have nothing to do with your site” but thought he would bring it to the claimant’s attention. Mr Turner says that this demonstrates that Mr Worsdale was not in fact confused (though Mr Reed responds by saying that he does not have to prove actual confusion and that Mr Worsdale is evidently in doubt). Mr Turner says that it may be possible to trace the telephone recording by the time of any trial and on the basis of that to demonstrate that Mr Worsdale was careless or stupid.

(e) Ms Angharad Knights received a telephone call (of which there is a recording); sent a contemporaneous email complaining that the caller “mentioned money saving expert and Ministry of Justice”; complained that she was very upset and annoyed, did not know how the caller got her number, and did not know where he was calling from (but asserted that he was using the “money saving expert” name); said that she did not think that the claimant did “cold calling”; and asked the claimant to explain if the caller had anything to do with “Money Saving Expert” adding “I am normally quite a level headed girl, but this really threw me”. Mr Turner says that at trial she will be demonstrated to be an unreliable witness because (a) she says that the caller spoke quickly (which he says is not supported by the recording), (b) that listening to the recording demonstrates that the caller did not say he was “from” the Ministry of Justice but “regulated by” the Ministry of Justice, (c) that whilst Ms Knights was upset the cause of her upset was the discovery that CCL could not help her because her indebtedness was too small; (d) that when asked if she had heard anything about PPI claims she said that she had “seen the stuff on the Money Saving Expert website” (not “your website”, which demonstrates she knew she was talking to somebody else); and (e) that although her witness statement is dated 5 May 2011 she has failed to address such of these points as was raised in CCL’s evidence filed in January 2011. I have listened to the recording of the telephone call.

(f) Mr Fallon received a phone call from CCL and sent an email to the claimant saying that he had “just had a telephone call from someone claiming to be from money saving expert” encouraging him to claim back bank charges and PPI costs from his bank and credit cards. He said

“if this call was genuinely from yourselves, I’d appreciate it if you could take me off your marketing lists. If it wasn’t (which I suspect is the case) I thought you might like to know…”.

Mr Turner says that the recording shows that CCL did not in fact offer to reclaim bank charges (because this is not a service which it provides, and Mr Fallon had already reclaimed them because he was involved in the financial services industry). But the recording undoubtedly shows enquiries about bank accounts and credit cards and hidden fees and suggestions that they may be unenforceable. Mr Turner says that Mr Fallon was not in fact confused.

(g) Mr Addy received a telephone call which he says was from someone purporting to be from Money Saving Expert; that he thought it was unusual; that he got three or four calls offering help to reclaim his bank charges and that “as I knew that Money Saving Expert had free template letters I realised that they were not really from Money Saving Expert”; so he sent the claimant an email. There is a recording of one telephone conversation. Mr Turner says that Mr Addy was not confused, but was in any event inattentive (because the caller had not asked about bank charges but simply whether he had received “a refund from a bank or lender”). I have listened to the recording.

(h) Mrs Sandy Scott made a witness statement in which she said she had received an unsolicited call from Money Saving Expert enquiring about a refund on PPI; that she was annoyed by the call, and was concerned that she was the victim of someone falsely claiming to be from Money Saving Expert; and accordingly sent an email informing the claimant that she had “received a phone call yesterday evening purporting to be from Money Saving Expert”. She expressed the belief that the claimant did not contact anyone with sales calls and asked what she should do if it happened again. There is a telephone recording of two calls. In the first the caller gives the name “Money Claiming Experts”, Mrs Scott later asks for the caller to identify themselves again and is again told that it is “Money Claiming Experts”, but plainly hears “Money Saving Expert” for she says that she does get “your newsletter” (the claimant does produce a newsletter: the Defendant does not). In the second call Mrs Scott asks CCL to confirm that she is speaking to Money Saving Expert and is given that confirmation): she then reiterates that she receives the Money Saving Expert newsletter; and it is at that point that the CCL operative says that he represents a different company. Mr Turner says that Mrs Scott’s witness statement was “a bit fly” because it did not specifically refer to the second conversation in which her apparent confusion over the identity of her caller was cleared up: so she has not made a full and frank statement. Furthermore, the fact that she may have been in doubt is not enough to establish a risk of confusion. Mr Turner further submits that nothing should be made of CCL’s confirmation that they were “Money Saving Expert” because the operative would have been expecting to hear an enquiry about “Money Claiming Experts”, and therefore simply confirmed what he thought he had heard. I have listened to the recordings.

(i) Rachel Barton received a call, and to her “it sounded like they were saying that they were calling from Money Saving Expert”. It was the fourth such call she had received: she had ignored the previous three. She immediately sent an email to the claimant saying that she was fed up with having the claimant call her at all times of the day, and asking to be taken off the claimant’s lists. But it is quite clear from the caller’s number that it was CCL that telephoned. The recording of the call has not been traced. Mr Turner says that this evidence was only delivered late, that it may be possible to trace the recording of the call, that it is unfair to make any decision before that opportunity has been afforded, and that there is a real prospect that CCL can demonstrate that Mrs Barton was inattentive because she had complained that she had “a young son who needs his daytime sleeps and your calls interrupts these” so that maybe the baby was crying.

(j) Mr McNeil received a call “and it sounded like they were saying that they were calling from money saving expert”. The initial part of the call was about a claim for a PPI refund. When Mr McNeil dealt with that “they asked whether [he] had a credit card at which point [his] shield went up and [he] knew something was not right”. He regarded it as “a complete scam” and emailed the claimant because he “thought you should know given they are sneakily using your well built trusted name to rip people off”. There is a bad and indistinct recording of what appears to be the second of the calls Mr McNeil received. Mr Turner submits that Mr McNeil is obviously hostile and was not in fact confused, and that by the time of a trial the bad recording may be enhanced so that the judge would actually hear what was said.

(k) Mr Turner submits that I have evidence of ten contacts out of approximately 500,000 telephone calls made during the relevant period, that of the ten three cannot be connected with CCL (which I accept), three were not confused at all (Worsdale, Addy and McNeil), three may have been in some sort of doubt (Scott, Knights and Fallon) and only one (Barton) was genuinely confused.

23. 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.

24. 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.

25. 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).

26. 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.

27. 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.

28. 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.

29. 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.

30. 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.

31. 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.

32. 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.

33. 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.

34. 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.

35. 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.