In adjudicating a dispute over insurance
advertising, Lady Justice Arden said that hearing officers should
mostly use their own judgment in cases unless the marks operated in
highly specialised markets.
If third party evidence about consumer
confusion was needed, she said, then it should come from consumer
surveys, not from experts.
While stopping short of saying that expert
evidence should never be used, Lady Justice Arden did say that it
should be restricted to "exceptional situations".
She was ruling in a dispute over trade marks in
the insurance market. Direct Line had a trade mark for a telephone
on wheels and opposed esure Insurance's application for a trade
mark for a computer mouse on wheels, claiming that it would be
confusingly similar for consumers.
A hearing officer of the UK Intellectual
Property Office (UK-IPO) said that in his opinion there would be
confusion in the minds of consumers between the wheeled telephone
and the wheeled mouse, and rejected the application for esure's
mark.
The High Court said that the hearing officer
was wrong to conclude that based on his own opinions. The Court of
Appeal has in turn overturned that decision, saying that where a
trade mark was aimed at the general public, the hearing officer was
entitled to form his own opinions on confusion.
"What the hearing officer had to determine was
what the average consumer would have thought of the two marks and
whether they would have confused him," said the ruling. "The
services sold by the parties were identical and were of a kind
familiar to members of the public. In those circumstances, I see no
reason why the hearing officer should not have decided the issue of
similarity on his own in the absence of evidence apart from the
marks themselves and evidence as to the goods or services to which
they were, or, in the case of esure's mark, were to be
applied."
The ruling also has implications for expert
witnesses who are sometimes called on to give a view of how marks
would be perceived in certain industries and what the likelihood of
confusion for consumers would be.
"Given that the critical issue of confusion of
any kind is to be assessed from the viewpoint of the average
consumer, it is difficult to see what is gained from the evidence
of an expert as to his own opinion where the tribunal is in a
position to form its own view," said Lady Justice Arden. "That is
not to say that there may not be a role for an expert where the
markets in question are ones with which judges are unfamiliar."
The ruling quoted a judge in previous case
involving The Economist newspaper, in which the judge said that the
views of experts was inadmissable, that they "are experts in the
market, not on confusing similarity".
Lady Justice Arden said that if a hearing
officer or judge needs help in deciding on consumer confusion, a
survey of consumers should be used. "If more cogent evidence of
customer perception is needed, the traditional method of consumer
surveys must…carry more weight and is to be preferred," she
said.
She said that consumer surveys were not perfect
and could be rendered useless by the asking of the wrong questions.
She recommended that anyone conducting a survey seek the court's
instructions on the scope or methodology of a survey to ensure that
it is useful.
