European Ltd v Economist Newspaper Ltd

Date

20 November 1997

Legislation

Trade Marks Act 1994, s. 10(2), 11(2)

Keywords

infringement; likelihood of confusion; similarity; fair use; descriptive use words; trade mark use

Counsel

Christopher Morcom QC, Jessica Jones, Michael Bloch, Emma Himsworth

Solicitors:

Lovell White Durrant, Willoughby & Partners

Judge:

Millett, Hobhouse, Otton LJJ

Court:

Court of Appeal

Reported:

[1998] ETMR 307, [1998] EMLR 536, [1998] FSR 283.

Summary:

The Claimant alleged that the Defendant had infringed, under section 10(2) of the Trade Marks Act 1994, its registered trade mark THE EUROPEAN and device by producing a newspaper called 'European Voice', because it was so similar as to give rise to a likelihood of confusion.

Decision:

The Court of Appeal found that the judge was right to have decided that there was no likelihood of confusion, and had in mind the correct factors, including that the goods were identical. The signs were different in appearance, the word 'European' was being used in a different manner in the two signs, and because the word was descriptive, the monopoly attaching to the registration of the trade mark was restricted (see also R v Johnstone (HL) on the descriptive use of registered trade marks and criminal liability). The claim was therefore dismissed.

The CA also commented on the defence under section 11(2) protecting the fair use of indications concerning the kind, quality, intended purpose, geographical origin etc of goods, and held that it was not intended to allow confusingly similar indications of the trade origins of goods provided that other features made actual confusion unlikely.