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[2008] EWCA Civ 842 TEDR Volume 13 Issue 3

The Facts

This matter arose out of opposition proceedings pursuant to the Trade Marks Act 1994. The opponents (Direct Line) contended that the mark sought to be registered (a computer mouse with wheels (of undetermined colour) for insurance and financial services) was similar and confusing relative to their own (a red telephone with wheels) and that it took advantage of their own mark.

The critical issue was that of confusion, i.e. Would people confuse the esure mouse with the Direct Line Telephone and the Direct Line company and business.

Direct Line commissioned an Expert’s Report from an expert in branding.

He had no specific expertise in the insurance market.

With regard to confusion, his report read as follows:

“It is my opinion that people would confuse the esure mouse on wheels with the Direct Line Telephone Device and the Direct Line company and business. The use by esure of an object of a similar oblong, block-like shape, also on chunky wheels – which up to this time have been the “property” of Direct Line – would lead a significant number of the public to think that the esure mouse with wheels was somehow connected with Direct Line, particularly as both companies are involved in insurance. The fact that the esure mouse on wheels is also a desk top object could increase the confusion which I believe will arise. Confusion is especially likely to arise in the case of the esure mouse on wheels if used in the colour red, as at appendix 4 (“the red esure mouse on wheels”), as the colour red has also in my view become the “property” of Direct Line and a major component of the Direct Line Telephone Device. It is not uncommon for companies to extend their brands to embrace new products and services using their well established brand device, or create similar devices as a “family” of related devices. It is my opinion that the use by anyone, including esure, of a device similar to Direct Line Telephone Device, such as the esure mouse on wheels would cause confusion among members of the public.”

The matter proceeded before a hearing Officer of the Trade Marks Registry where the opposition of Direct Line was upheld. The decision was upheld on appeal. Part of the test applied was, however, criticised. The matter came before the Court of Appeal.

The Issues

This review is restricted to the issues relating to expert evidence.

The relevant issue was, therefore, whether expert evidence was required and/or what weight ought to have been attributed to the expert evidence that was before the Court.

The Decision

Once again, the Courts reiterate that an expert is only qualified to give evidence about a matter which is within his expertise and is not within the knowledge of a lay-person.

Comment

Clearly, the instructions to the expert ought to recognise the permissible scope and be limited in their remit accordingly.

That said, when acting as an expert, do raise these issues with those instructing you to avoid any personal discomfort at trial!