‘Money saving expert’ awarded summary judgment
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In Lewis v Client Connection Ltd ( EWHC 1627 (Ch), July 6 2011), the High Court has awarded summary judgment in favour of Martin Lewis under Section 10(2) of the Trademarks Act 1994.
Lewis owned the MONEY SAVING EXPERT trademarks in relation to "advisory services relating to financial matters provided via an internet website", registered in 2008 and used since 2000. Lewis operated ‘moneysavingexpert.com’, which contained advice and template letters enabling users to reclaim monies in relation to, among other things, mis-sold payment protection insurance.
Client Connection Ltd operated a telephone-based claims management business, dealing with, among other things, claims arising out of mis-sold payment protection insurance. Until September 2010, it operated under the name Money Claiming Experts. Lewis claimed that Client Connection made, or caused to be made, telephone calls while holding itself out as Money Saving Expert, or was heard to describe itself as such. This, Lewis said, amounted to infringement of his marks under Sections 10(1), 10(2) and 10(3) of the Trademarks Act. Client Connection mounted a counterclaim that the marks should not have been registered as they were purely descriptive and not distinctive.
With regard to the Section 10(1) claim (use of an identical mark), Lewis argued that the marks were aurally identical, as Client Connection contacted its potential customers by telephone. Mr Justice Norris refused summary judgment under this head for several reasons.
Firstly, Client Connection did not admit introducing itself as 'Money Saving Expert' and denied authorising or promoting the name’s use. Accordingly, Norris J considered there was a real prospect that Lewis would be unable to establish, on the balance of probabilities, that Client Connection used or authorised the use of 'Money Saving Expert'.
Secondly, Lewis claimed that, if Client Connection did not use the MONEY SAVING EXPERT mark, it used a sign which, when heard over the telephone and spoken quickly, was aurally identical ("money…a…ing expert") because the differences were so insignificant that they would go unnoticed by consumers. Having heard relevant telephone recordings, Norris J gave the benefit of the argument to Client Connection.
Thirdly, Norris J said that Client Connection did not use any sign for services that were identical with those of Lewis, since it provided its services over the telephone, whereas Lewis provided advisory services via a website.
With regard to the Section 10(2) claim (likelihood of confusion), Lewis relied on recordings of unprompted telephone calls made by Client Connection to consumers who heard the callers introduce themselves as being from 'Money Saving Expert' (even where the callers actually said 'Money Claiming Experts'). Witness statements were adduced from several of these consumers. Client Connection argued that there should be a trial to allow it to prove that the witnesses were not reasonably well informed, observant or circumspect, and that a comparison of the witness statements with the telephone hearings would demonstrate that the witnesses were unreliable.
In addition, the evidence showed that the customers in question were not actually confused. In the majority of cases, the witnesses who heard the Client Connection callers introduce themselves as 'Money Saving Expert' did realise that they were being called by a different company, or express some doubt as to who was calling them.
Norris J found that the evidence was, if unchallenged, sufficient to prove Lewis' case. Furthermore, Lewis demonstrated no real prospect of doubt as to the case’s outcome. It was unimportant that some of the customers were not actually confused, as Lewis just had to show a likelihood of confusion.
Client Connection submitted that Lewis’ marks were descriptive. The judge agreed, but observed that, as Lewis had used the marks over an extensive period, they had acquired a level of distinctiveness, affording them broader protection.
Having succeeded under Section 10(2), it was unnecessary to rule on this point as well. However, Norris J said he would have been persuaded that Lewis would succeed under Section 10(3). By using 'Money Claiming Experts', Client Connection was riding on the coat-tails of Lewis' registered marks, benefiting from their power of attraction, reputation and prestige. Norris J also said that the association of Lewis’ website with fee-based claims management procured by cold-calling customers would have tarnished his marks.
Lewis managed to show that his marks had, over the years, acquired a relatively high level of distinctiveness. By September 2010, the template letters available on his website had been downloaded by users 967,000 times. In addition, it was clear from the evidence that there was capacity for confusion to arise, which, once similarity is established, is all that is needed to prove infringement under Section 10(2).
Simone Goligorsky, McDermott Will & Emery UK LLP, London
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