Can you win a trade mark case without evidence of actual confusion?
This Court of Appeal decision is a helpful reminder that a lack of evidence of actual confusion is not necessarily fatal to a finding of trade mark infringement.
The two IP specialist judges and one of the few female judges in the Court of Appeal upheld a finding of likelihood of indirect confusion between EU and UK trade marks for EAGLE RARE (registered for, respectively "bourbon whiskey" and "whiskey" and other goods in class 33) and a bourbon whiskey sold under the name AMERICAN EAGLE. The third member of the panel was and the case was Liverpool Gin Distillery Ltd & Ors v Sazerac Brands, LLC & Ors  EWCA Civ 1207.
Likelihood of confusion
In the High Court, at first instance, the judge found that the average consumer of bourbon had a “somewhat higher degree of attentiveness than a consumer of certain other spirits” and there was “a significant degree of similarity, but not overwhelming similarity” between EAGLE RARE and AMERICAN EAGLE (see images showing examples of both products). As a result the judge held that the trade marks were infringed.
Despite there being no evidence of actual confusion, the judge found that “there is a likelihood of confusion in that a significant proportion of the relevant public could be likely to think that American Eagle and Eagle Rare are related brands”.
Did judge err in principle?
Halewood, the company behind AMERICAN EAGLE, appealed that decision, arguing that the judge erred in principle on five grounds. These grounds related to the principle of contextual assessment of the use of the sign complained of, and the finding of a likelihood of indirect confusion.
In his judgment, with which the other two judges agreed, Arnold LJ noted that there are two main kinds of confusion which trade mark law aims to protect a trade mark proprietor against:
“The first, often described as ‘direct confusion’, is where consumers mistake the sign complained of for the trade mark. The second, often described as ‘indirect confusion’, is where the consumers do not mistake the sign for the trade mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the trade mark or from an undertaking which is economically linked to the undertaking responsible for goods or services denoted by the trade mark.”
Arnold LJ rejected each of the challenges regarding the principle of contextual assessment of the use of the sign complained of. Turning to the finding of likelihood of indirect confusion, he found that – even if Halewood’s criticisms of the judgment were well-founded – the judge was entitled to conclude that some consumers of bourbon confronted with AMERICAN EAGLE would be likely to believe it was related to EAGLE RARE:
“In particular, I consider that he was right to infer that there was a likelihood of some consumers thinking that EAGLE RARE was a special version of AMERICAN EAGLE. Contrary to the submission of counsel for Halewood, this was not speculation given the judge’s findings of fact … Moreover, the judge was correct to proceed on the basis that consumers would not necessarily scrutinise the label to check whether or not there was a link. Trade mark law is all about consumers’ unwitting assumptions, not what they can find out if they think to check.”
The judgment provides a useful summary of the difference between direct and indirect confusion. Its emphasis on the importance of “consumers’ unwitting assumptions” in trade mark law is also helpful.
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org