Direct Line's device mark opposition upheld by High Court

United Kingdom

In esure International Ltd v Direct Line Insurance plc ([2007] EWHC 1557 (Ch)), the High Court of England and Wales has upheld an earlier decision allowing Direct Line Insurance plc's opposition against the registration of a device consisting of a computer mouse on wheels.

Direct Line provides insurance and financial services direct to the public, mainly via online, email and telephone access. It started using a telephone-on-wheels device in its advertising in 1990. It has secured national and Community trademark registrations for the device.

esure International Ltd is a direct competitor to Direct Line and runs its business in much the same way. In September 2004 it applied to register as a mark a device consisting of a representation of a computer mouse on wheels and started using it in its advertising. Direct Line opposed. The hearing officer at the UK Intellectual Property Office upheld that opposition: in his view the registration of the mark would be detrimental to the distinctive character of Direct Line's device mark, contrary to Section 5(3) of the Trademarks Act 1994.

esure appealed, maintaining that the hearing officer had erred in his application of the relevant principles pertaining to the operation of Section 5(3) of the act. The High Court dismissed the appeal and upheld the original decision. The judgment includes an extremely detailed survey of the relevant European Court of Justice and domestic case law on the issue of detrimental use of a mark, as well as discussions of fettering and tarnishment.

Among other things, the court affirmed the position taken by the European Court of First Instance in Sigla v Office for Harmonization in the Internal Market (Case T-215/03) earlier this year that submissions of tarnishment that are not substantiated by at least prima facie evidence that a later mark will damage the repute of the earlier mark should not be entertained: the courts are there to decide issues on the facts - however threadbare those facts may be - and not to entertain mere speculation.

Jeremy Phillips, IP consultant to Olswang, London

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