Court considers (ir)relevance of expert evidence in trademark cases

United Kingdom
In esure Insurance Limited v Direct Line Insurance Plc (Case A3/2007, July 23 2008), the Court of Appeal of England and Wales has given particular consideration to the use of expert evidence in establishing confusion in trademark cases.
esure Insurance Limited sought to protect the image of a computer mouse on wheels for insurance and financial services. The application was opposed by Direct Line Insurance Plc, which pioneered the direct selling of insurance services to the public and owns a trademark registration for the image of a red telephone on wheels. Direct Line’s opposition was based on two grounds:
  • a likelihood of confusion between the two parties' marks; and 
  • registration of esure's mark would take unfair advantage of, or be detrimental to, Direct Line’s trademark.
The hearing officer of the Trademark Registry held that there was a likelihood of confusion, without reference to the expert evidence filed by Direct Line. The decision was appealed and the court held that there was no confusion. However, it found that registration of esure's mark would take unfair advantage of Direct Line's trademark. In reaching its decision, the court took into account the opinion given in the expert evidence. esure appealed.
The Court of Appeal reiterated the following well-established principles: 
  • Confusion must be ascertained from the viewpoint of the average consumer (SABEL BV v Puma AG (Case C-251/95)). A principle of interdependence of the relevant factors is to be applied when considering: 

    • the similarities of the goods and the marks; and
    • whether there is a likelihood of confusion.
  • The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97)). 
The court went to on to say that there is no threshold level of similarity. If there is no similarity, there is no issue of likelihood of confusion to be considered. If there is some similarity, the likelihood of confusion is to be considered without any need to find a minimum level of similarity.
According to the court, a decision can be made based on the experience of the hearing officer without evidence of confusion or the opinion of the expert. The expert in this case was a branding expert without specialist knowledge of the insurance market; he gave his opinion on the issue of confusion and how the marks would be perceived by consumers. The hearing officer was entitled to determine what the average consumers would have thought of the marks and whether they would be confused. Relying on GE Trademark ([1973] RPC 297, 321), the court held that this was a 'jury question' - the hearing officer’s own common sense was to be used to consider whether he was himself likely to be deceived or confused. The lower court was thus wrong to interfere with the decision of the hearing officer on the issue of confusion.
Therefore, the decision of the hearing officer holding that there was confusion between the marks was upheld and the opposition succeeded. Consequently, the issue of whether esure took unfair advantage of Direct Line’s mark did not need to be considered.
In terms of the expert evidence, the court held as follows:
  • The issue of confusion is assessed from the viewpoint of the average consumer and nothing is gained from the opinion given in the expert evidence, particularly where the tribunal is in a position to form its own views;
  • Expert knowledge of a particular market may necessitate expert evidence, but not in circumstances where the market is familiar to judges; and
  • The expert can give his or her opinion only on a particular market, and not on the issue of confusing similarity.
Cheng Tan, McDermott Will & Emery UK LLP, London                               

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