23 January 2011

Trade Marks: 32Red v WHG

This was Mr. Justice Henderson's judgment in the trial of an action between two Gibraltar based online gambling concerns. The claimant in 32Red Plc v WHG (International) Ltd and others [2011] EWHC 62 (Ch) (21 Jan 2011) had sued for infringement of Community trade mark 2814424 and British trade mark 2509861. The defendants had counterclaimed for invalidation of those registrations. The signs to which the claimants objected were the words "32vegas.com", "32vegas" and "32v" and three devices incorporating the numeral 32.

In a rather long judgment, His Lordship identified the following issues and considered them in the following order:
  • whether the CTM been infringed under art 9 (1) (b) of the CTM regulation?
  • whether it had been infringed under art 9 (1) (c);
  • whether the CTM registration was invalid;
  • whether the British trade mark registration was invalid; and
  • whether the British mark had been infringed.
Mr. Justice Henderson found that the CTM was valid and that it had been infringed under art 9 (1) (b) and (c). He also held the British registration to be valid but that it had not been infringed.

The case turned very much on the facts but there were several points of law.

In his discussion of infringement under art 9 (1) (b) he applied the principles developed by the Court of Justice of the European Union as summarized by Mr Geoffrey Hobbs QC and approved by Mr. Justice Arnold at paragraph [73] of Och-Ziff Management Europe Ltd and another v Och Capital LLP and another [2010] EWHC 2599 (Ch) (20 Oct 2010) and also the guidance of the Court of Appeal between paragraphs [82] and [86] of Reed Executive Plc and others v Reed Business Information Ltd and others [2004] EWCA Civ 159, [2004] RPC 40, (2004) 27(6) IPD 27058, [2004] Info TLR 55, [2004] Masons CLR 29, [2004] ETMR 56. Mr. Justice Henderson said said at paragraph [93]:
"93. The goods and services covered by the Vegas signs are identical, or at any rate virtually identical, to those covered by the Community marks: in each case, the goods and services are those provided by an online casino, and the signs or marks are used to brand the casino. This is an important initial point, because in such circumstances a lesser degree of similarity between the marks may suffice to establish a likelihood of confusion (proposition (g) in the Trade Marks Registry summary).

94. That the Vegas signs are similar to the Community marks is in my judgment undeniable. In both their written and their graphic forms, there is an initial figure 32 followed by a single word (or in the case of the 32v signs, followed by a single letter which in its context plainly alludes to the word "vegas"). The figure 32 does not of itself denote anything to do with online gaming: it is just a number, and not even a number with obviously lucky (or unlucky) connotations, such as 7 or 13. Furthermore, the single word "vegas", like the colour "red", is agreed to have a gaming association. Thus the use by William Hill Online in 2009 of the inherently specific number 32 in conjunction with the single word "vegas", to identify and brand an online casino, clearly satisfied the test of similarity. The critical question, therefore, is whether the similarity was such as to give rise, in all the circumstances, to a likelihood of confusion on the part of the public, including a likelihood of association in the sense of engendering the mistaken belief that the two casinos were operated by the same or economically-linked entities.

95. In answering this question I must look at the matter through the eyes of the average consumer of online gaming services, whom it is convenient to call an "online gambler" for short, while remembering that for many customers the activity is essentially a recreational one, and not all customers play for real money. I must also make due allowance for the fact that the average online gambler will rarely have had the opportunity to make direct comparison between the Community marks and the Vegas signs, and will have had to rely on the imperfect picture of them retained in his mind. It is material to note in this context that the online gambling market is a crowded and volatile one, with a large number of brands competing for customers' attention, and generally very low levels of customer loyalty and retention.

96. I think it is also relevant to have in mind the difference between the marketing models of 32Red and 32Vegas. By January 2009 32Red was a strong brand with an excellent reputation, and from its inception in 2002 it had been promoted alone, not as part of a family of brands in common ownership. By contrast, 32Vegas had always been marketed on the "carousel" model, and as Mr Cole-Johnson frankly acknowledged the reputation of individual casinos was never of any particular importance to William Hill Online, any more (I infer) than it had previously been to Crown Solutions. In these circumstances it seems to me reasonable to conclude that the Community marks are likely to have made a rather stronger and more positive impression on members of the online gambling community than the Vegas signs.

97. The next point I would make is that the Community marks are, and were in 2009, highly distinctive in character. The distinctiveness lay in the combination of the specific number 32 (which in itself has no obvious gambling connotation) with the word or the colour red, which is agreed to have a general gambling connotation. Some, but by no means all, online gamblers will also have picked up the specific allusion to roulette, and will have recognised the marks as making a verbal or visual reference to the result that a croupier would be likely to call out when the ball lands in the 32 slot. This allusion, I would stress, is not directly descriptive of the game of roulette, or of any particular feature of the game; but, for those who recognise it, the allusion gives a much stronger and more specific gaming flavour to the Community marks than the mere use of the word or colour red could do by itself. In a similar way, the red colouring of the script and of the circle in the graphic Community mark reinforces the effect of the word "red", but those who recognise the allusion to roulette may also see the circle as a stylised representation of a roulette ball.

98. I now turn to the Vegas signs. The three text signs all begin, like 32Red, with the figure 32. In two cases this is then followed by the word "vegas" which, because of the obvious allusion to Las Vegas, has a strong (but still general) gambling connotation. In the third case, the single letter "v" will, as I have already said, naturally be read as an abbreviation of "vegas". There is no allusion to roulette or to any other specific game offered by an online casino, and the number 32 has no connection of any kind with Las Vegas. Read or recalled as a whole, the text signs are in my view devoid of any descriptive character beyond the generalised reference to gambling inherent in the word "vegas". The main visual sign is reminiscent of a neon casino sign, and the gaming message is reinforced by the red and gold colouring and the star. The two smaller visual signs focus on the gold 32 and star with the interlocking white "V", and in one case the red background is also similar to that of the main sign; in the other case the background is black, another colour with a generalised gaming connotation (for example the suits of playing cards are either black or red).

99. As a matter of overall impression, the dominant feature of all the Vegas signs is in my view the figure 32. It comes first, whether one is examining the verbal, visual or aural impact of the signs, and in the graphic signs the 32 is notably larger and more brightly coloured than the white "Vegas" or "V". An online gambler would naturally gain the impression, perhaps at a subliminal level, that the "Vegas" component of the signs is in some way subordinate in impact and importance to the "32", although he would also recognise that the "Vegas" is connected with and part of the "32" (a connection visually reinforced by the interlocking of the "2" and the "V").

100. Was there, then, a likelihood of confusion on the part of the average online gambler in 2009 between the Vegas signs and the Community marks? In my judgment there was. It is simplest to begin with the online gambler who did not pick up any allusion to roulette in the Community marks. For such a person, the overall impression created by the Community marks and the Vegas signs would have been very similar: in each case the name of the casino consists of the same number (32) in the dominant position (verbally, visually and aurally), followed by a single word with a general gaming flavour. A natural conclusion to draw would have been that the two casinos were under common ownership or economic control. In addition, the likelihood of an association between the two casinos might well have been reinforced, consciously or unconsciously, by the red background to two of the three graphic Vegas signs, including the main sign where the figure 32 is prominently displayed in gold against a bright red background. The combination of the figure 32 and the colour red could hardly be more striking, and in view of the established reputation of 32Red in 2009 the link to 32Red would have been an obvious and easy one for many online gamblers to make. In a world where stables of thematically-linked online casinos were familiar, there would have been nothing surprising in a burgeoning family of "32" casinos. What would have been surprising, given the highly specific nature of the number 32 and its lack of any intrinsic gambling association, is for two unconnected casino operators to have hit on two such similar names independently.

101. I must now consider those online gamblers, perhaps the majority, who would have picked up an allusion to roulette in the Community marks. For them, the 32Red name and brand will have had a special extra significance, and they may have agreed in substance with Mr Bailey's perception that the name "seemed a clever play on words … it was a breath of fresh air" (paragraph 138 of his report), even if they would not have expressed themselves in quite such enthusiastic terms. But, to return to a point which I have already made, the allusion does not turn the marks into purely, or even partly, descriptive ones. It just gives an added layer of reference, and increases the distinctiveness and memorability of the marks, for those who pick it up. It does not alter the basic form and structure of the marks in any way, nor in my view does it detract significantly from the features discussed above which give rise to a likelihood of confusion with the Vegas signs. The position is, rather, that online gamblers who were alive to the allusion might also have supposed there to be an association between 32Red and another casino which called itself (say) 8Black or 28Even."
For those reasons he concluded that 32Red's infringement claim under Article 9(1)(b) succeeded in relation to all of the signs. He reached this conclusion without needing to rely on any evidence of actual confusion, even though a certain amount of evidence to that effect had been tendered by the claimant. His lordship observed that "the test laid down by Article 9 (1) (b) does not require evidence of actual confusion, and if such evidence is available it is likely to be of a confirmatory nature rather than an essential ingredient of the value judgment that, in the words of Jacob LJ in the Reed case, the court has to draw from all the circumstances."

As to art 9 (1) (c) the judge the judge relied on the Court of Justice's guidance at paragraph [68] of Case C-252/07 Intel Corp v CPM UK [2009] Bus LR 1079, [2009] ETMR 13, [2009] RPC 15, [2008] EUECJ C-252/07, [2008] ECR I-8823 that the "likelihood of injury must be assessed globally taking account all factors relevant to the circumstances of the case".

If anybody wants to discuss this case or trade marks law in general he or she is very welcome to telephone me or contact me through my online form.

PS. The defendants appealed and the claimant cross-appealed against Mr Justice Henderson's decision.   The appeal came on before the Court of Appeal on 24 Jan 2012 (see 32Red Plc v WHG (International) Ltd and Others [2012] EWCA Civ 19 (24 Jan 2012). I have written a short case note on the appeal as it contains some interesting analysis on distinctiveness and infringement.

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