"*767 Premier Brands UK Ltd v"
Page 1 *767 Premier Brands UK Ltd v. Typhoon Europe Ltd known brands of tea in this country; indeed, Mr Richard Arnold, who appeared on behalf of Premier, In the High Court of Justice--Chancery Division may well have been right to say that it is one of the best known brands of any description in this country. Ch D The three registered trade marks in suit are all in Before: Neuberger J. respect of the word-only mark TY.PHOO **** January 21, 2000 TY.PHOO is one of Premier's most famous and Introduction profitable brands. Tea under that mark has been sold in the United Kingdom since 1903, and it is currently This action involves: the third biggest seller in the U.K. tea market. Mr 1. A claim for infringement of three registered Christopher Thomas, Marketing Director for Premier, trade marks brought by the registered proprietor, said in his evidence that the Company had been Premier Brands UK Limited ("Premier"), against investing many millions of pounds every year Typhoon Europe Limited ("TEL") and its managing promoting the mark and improving the tea sold under director Mr Peter Battersby; the mark. He stated that tea under the TY.PHOO 2. A claim for revocation of two of those trade mark is sold "at a slightly higher price than its marks brought by TEL. majorcompetitors to reflect the premium nature of the brand". He also said that "Premier have concentrated Premier's claim is brought on two bases. The first is on promoting TY.PHOO for a number of years as a pursuant to section 10(2) of the Trade Marks Act traditionally British tea". 1994 ("the 1994 Act"). References to sections are, unless otherwise stated, to sections of that Act. Apart from its use in relation to tea, the TY.PHOO Section 10(2)(b) implemented Article 5(1)(b) of the mark has been used on tea canisters, tea pots, mugs, EC Trade Marks Directive (Council Directive tea towels, milk jugs, sugar bowls, biscuit barrels, 89/104/EEC, ("the Directive"). References to Articles cups, mug trees, aprons, storage jars, memo boards, are to Articles of the Directive. Premier also relies on tea cosies, trivets, tea pot stands, trays, cafetieres and section 10(3), which implemented Article 5(2), and in drinking glasses. As Mr Arnold rightly accepted, the that connection the present case of alleged use of the TY.PHOO mark on these goods is infringement is the first to come to trial in the United intended to promote tea sold under the same brand. In Kingdom on that provision of the 1994 Act, which other words, as Mr Michael Bloch, Q.C. (who has no equivalent in previous legislation. appeared with Mr James Abrahams for TEL) put it, in so far as the mark is affixed to these goods, it is for TEL's claim involves consideration of aspects of promotional purposes, i.e. it is a means of promoting sections 46(1)(a) and (b), which implement Articles the sales of Premier's tea. 10, 12 and 13, on which there is no guidance from the European Court of Justice ("the ECJ") or from any This point is substantially reinforced by the fact that, English Court, albeit that there are some relevant with two exceptions, the products which I have listed decisions of the Trade Mark Registry. above (which I shall refer to as "the Goods") are given away, rather than sold, by Premier. The first The basic facts exception to this is a TY.PHOO tea caddy which is made and sold by a company called Armstrong and Premier Brands UK Ltd Claydon Products plc (trading as Grumbridge), which has Premier's permission to use the TY.PHOO mark Premier is an importer, blender and supplier of tea, for this purpose, without the payment of any royalty. whose trade mark TY.PHOOis one of the best Over the past three years, around 5,700 such caddies have been sold. Secondly, in 1997 a wooden mug tree, and mugs, all with the TY.PHOO mark, were **** marketed on "a special offer" basis ( <<PoundsSterling>>4.99 for the mug tree, << Before adopting the name TYPHOON, Mr Battersby PoundsSterling>>2.99 for each mug). There has been had discussions with his biggest customers, John no evidence as to the level of sales of these mug trees Lewis Partnership and Debenhams. It appears that the or mugs. name was acceptable to them, and there was no reference in those discussions to possible confusion Premier is acting as an official supplier to the with the mark TY.PHOO. Millennium Experience; in that capacity I was told that it proposed to sell not only tea, but also what Mr Press releases were issued introducing the new Thomas referred to as "tea paraphernalia", including TYPHOON name in June 1998, and it was launched tea caddies, glasses, tea towels, cups, mugs, mug in early September 1998 at the Housewares trees, tea pots and kettles, especially designed with International Trade Fair in Birmingham. The launch the Millennium in mind, and all bearing the was supported by an extensive advertising campaign TY.PHOO mark. These goods were to be (and and a series of receptions. Around the same time, presumably now will have been) sold from a shop in Taylor & Ng Ltd changed its name to Typhoon the Millennium Dome from January 10, 2000. Such Europe Limited. Between the launch in September Millennium-related products may also be sold 1998 until March 1999, TEL supplied some through certain high street outlets. <<PoundsSterling>>1.5 million worth of goods (excluding direct purchases by licensees from Typhoon Europe Limited factories), and this was in circumstances where there was, apparently, some possible holding back owing In 1990 or 1991, Mr Battersby, through a company to the instant proceedings, which had been issued in that he had formed called At Your Leisure Limited, October 1998. entered into an agreement with a Californian company to distribute oriental kitchen hardware The way in which the mark TYPHOON is used on sourced from the Far East, and at that time marketed TEL's packaging, its literature, and on the labels only in California, under the brand name TAYLOR attached to its goods is, in the main, as follows: The & NG. The products under this mark were sold, at letters are normally white, and the background is least in the main, to specialist cook shops, department normally red. Although this is not the sole means in store groups and houseware chains. In 1995, Mr which the TYPHOON mark is publicised by TEL, it Battersby acquired the TAYLOR & NG mark, and, appears to be the principal means. as the business in this country under that name grew, he decided to change the name of his company from The issues At Your Leisure Limited to Taylor & Ng Limited. As indicated in the opening part of this judgment, In his evidence, Mr Battersby said that, by the end of there are three issues between the parties. Two of 1997 "from discussions with members of the trade, it those issues arise from Premier's claim for was clear that TAYLOR & NG was not considered to infringement. Premier's first contention is that the use be an ideal brand name as it was difficult to of the sign TYPHOON, in relation to the range of consumers to pronounce and memorise the name". As kitchen housewares marketed by TEL, infringes a result, Mr Battersby instructed consultants, who Premier's rights as the registered proprietor of the came up with various possible new brand names for '270 and/or '276 Marks ("the defensive marks") by the kitchenware then marketed under the name virtue of section 10(2). So far as relevant, this TAYLOR & NG. Eventually the decision was made provides that: to adopt the sign TYPHOON. The name attracted Mr A person infringes a registered trade mark if he Battersby for a number of reasons. It had some uses in the course of trade a sign where because-- features of similarity with TAYLOR & NG (not least (a) ... the first letter), it was easily pronounced and (b) the sign is similar to the trade mark and is used memorable, it had oriental connotations, it was in relation to goods ... identical with or similar to understandable both in the east and the west, and it those for which the trade mark is registered. represented speed and dynamism. and there exists a likelihood of confusion on the (1) TEL uses the TYPHOON sign in the course of part of the public which includes a likelihood of trade; association with the trade mark. (2) The sign is similar to the TY.PHOO trade mark; The second issue raised by Premier's infringement (3) The TYPHOON sign is used in relation to claim is that the use by TEL of the TYPHOON sign goods [which] are identical with or similar to those infringes Premier's rights as registered proprietor of for which the defensive marks (or either of them) are the '126 Mark by virtue of section 10(3). This section registered; provides that: (4) There exists a likelihood of confusion on the A person infringes a registered trade mark if he part of the public, which includes the likelihood of uses in the course of trade a sign which-- association with the defensive marks, or either of (a) is ... similar to the trade mark, and them. (b) is used in relation to goods ... which are not similar to those for which the trade mark is ***** registered, [The court discusses in detail the similarities of the where the trade mark has a reputation in the marks and the differences in the goods sold] United Kingdom, and the use of the sign, being without due cause, takes unfair advantage of, or is Confusion: conclusion detrimental to, the distinctive character or repute of the trade mark. Bearing in mind the closing part of section 10(2), the guidance given by the ECJ and the English Courts as **** to the proper approach to be adopted to the question of confusion, and the evidence and arguments in I shall consider these … issues (each of which raises relation to this particular case, as discussed above, I sub-issues) in turn in the next three parts of the reach the conclusion that Premier's claim under judgment and I will then express my conclusion. section 10(2) fails. Despite the similarity of the mark and the sign (particularly on an aural basis), and the Before doing so, however, it is perhaps convenient to inherent distinctiveness of the TY.PHOO mark, I do identify the nature and purpose of a trade mark. not consider that the average customer for Unsurprisingly, this is not a contentious issue, but the kitchenware (whether of the comparatively exclusive position is well summarised by observations of the nature of that marketed by TEL or even of relatively ECJ in Canon Kabushiki Kaisha v. Metro-Goldwyn- less up market kitchenware), particularly bearing in Mayer Inc.  R.P.C. 117 at 133 at paragraph 28: mind that he or she is to be assumed to be reasonably [T]he essential function of the trade mark is to well informed and reasonably observant and guarantee the identity of the origin of the marked circumspect, would confuse the TYPHOON sign product to the consumer or end user by enabling him, used by TEL in relation to kitchenware with the without any possibility of confusion, to distinguish TY.PHOO mark as used in relation to the goods for the product or service from others which have which the defensive marks are registered. another origin for the trade mark to be able to fulfil its essential role in the system of undistorted Infringement: section 10(3)/Article 5(2) competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services Preliminary bearing it have originated under the control of the single undertaking which is responsible for their In order to succeed in its claim for infringement quality ... under section 10(3), Premier has to establish the following: Infringement: section 10(2)/Article 5(1)(b) (1) TEL is using the sign TYPHOON "in the course of trade"; Preliminary (2) The TYPHOON sign is similar to the TY.PHOO mark; In order to establish infringement under section (3) The TYPHOON sign is used in relation to 10(2), Premier has to establish that: goods which are not similar to those for which the '126 mark is registered (assuming, which I suspect is The courts have repeatedly held that it constitutes not in fact the case that section 10(3) cannot apply an act of unfair competition to associate the quality of where the goods are similar--see Sabel  R.P.C. one's goods or services with that of prestigious 199, at 223); competitive products for the purpose of exploiting the (4) The '126 mark has a reputation in the United good reputation of a competitor's goods or services in Kingdom; order to enhance one's promotional efforts. (5) The use of the TYPHOON sign by TEL is "without due cause"; Those observations are appropriate to a case where (6) The use of the TYPHOON sign by TEL: the sign is said to "take unfair advantage of" a mark a. takes unfair advantage of; and/or with established substantial goodwill. Observations b. is detrimental to of the German Federal Supreme Court in another the distinctive character or the repute of the '126 case, Quick  G.R.U.R. 182, are relevant to the mark. other type of case, namely where use of the sign "is detrimental to" a well established mark: Of these statutory requirements, there is obviously no [T]he owner of ... a distinctive mark has a dispute as to the first, third and fourth requirements. legitimate interest in continuing to maintain the While, as mentioned, in relation to section 10(2), Mr position of exclusivity he acquired through large Bloch did not formally concede that the second expenditures of time and money and that everything requirement was satisfied, the point was not strongly which could impair the originality and distinctive contended, I am firmly of the view, as already character of his distinctive mark, as well as the discussed in relation to the argument under section advertising effectiveness derived from its uniqueness, 10(2), that the TYPHOON sign is similar to the is to be avoided ... Its basic purpose is not to prevent TY.PHOO mark. The two issues which fall to be any form of confusion but to protect an acquired asset considered, therefore, are whether the use of the against impairment. TYPHOON sign by TEL could be said to be "without due cause", and whether the use of the TYPHOON This sort of detriment has been generically described sign takes unfair advantage of and/or is detrimental to as "dilution", and has also been said to occur the distinctive character or the repute of the normally in one of two ways, namely by "blurring" or TY.PHOO mark. I shall consider those issues in by "tarnishing". The concept of "dilution" in this turn. However, before doing so, it is right to consider context is not without its critics, for instance Mr the purpose and effect of section 10(3). Geoffrey Hobbs, Q.C., sitting as the ppointed Person in Visa Trade Mark (unreported, September 28, The purpose and effect of section 10(3)/Article 5(2) 1999). [FN3] However, as I read his observations, what Mr Hobbs was primarily saying was that one According to Recital 9 of the Directive, the purpose should not, as it were, blindly re-write a provision in of Article 5(2) is to provide "extensive protection to a statute or a directive, and then to seek to interpret it those trade marks which have a reputation", and such as re-written. To my mind, that is plainly right. protection is clearly intended to be over and above However, it does appear to me that dilution is a that available to marks without a reputation. As useful concept to bear in mind when considering the already mentioned, section 10(3) represents a application of section 10(3) to a particular set of significant extension to the protection hitherto facts. This view is fortified by the fact that Article accorded to proprietors of registered trade marks in 5(2) is based on Benelux law (see per the Advocate this country. However, the terms of Articles 5(2) do General in General Motors Corporation v. Yplon SA not appear to involve such a significant change to the  All E.R. (EC) 865 at 871C, and the Benelux domestic law of at least some of the other Member court appears to have recognised dilution as a basis States of the European Community. In these for a claim for infringement. On the other hand, (as circumstances, I consider that significant assistance the Advocate General pointed out in the passage to may be available to the English courts from the which I have referred) apparently unlike the Benelux jurisprudence developed on this topic elsewhere law, "the Directive spells out the type of harm against within the European Community. which protection is provided". In Dimple  G.R.U.R. 550, the German Federal FN3 Now reported as C. A. Sheimer's (M) Sdn. Bhd's Supreme Court, said that: Trade Mark Application  R.P.C. 484. and imitative descriptions. Any product which is not In connection with the relevance of the concept of Champagne but is allowed to describe itself as such dilution, it is also right to refer to section 145 of the must inevitably, in my view, erode the singularity Lanham Act in the United States, which specifically and exclusiveness of the description Champagne and defines dilution as: so cause the first plaintiffs damage or an insidious but ... the lessening of the capacity of a famous mark serious kind. to identify and distinguish goods or services, regardless of the presence or absence of-- Those observations were made in connection with a (1) competition between the owner of the famous passing off case, and have been subject to a degree of mark and other parties, or criticism from Millett L.J. in Harrods Ltd v. (2) likelihood of confusion, mistake or deception. Harrodian School Ltd  R.P.C. 697 at 716. However, neither of those two points appear to me to However, while dilution is a useful concept to bear justify the conclusion that the quoted observations do in mind, it does not necessarily follow that every case not represent a good summary, albeit not necessarily of infringement under section 10(3) will necessarily a comprehensive definition of blurring. I do not involve dilution, nor does it follow that the proprietor consider that the remarks of Millett L.J. in Harrods of a mark will necessarily succeed in establishing  R.P.C. 697 are relevant to the present issue, infringement under section 10(3) in every case where because his concerns about observations such as he establishes dilution. those of Sir Thomas Bingham in Taittinger  F.S.R. 641 were essentially based on the fact that Mr Bloch suggested that section 10(3) could not be they were made in the context of passing off rather invoked in a case such as the present, where than trade mark infringment. Premier's complaint is not dilution of the reputation of the brand, but dilution of the differentness of the The best-known example of tarnishing is perhaps to brand. Subject to the general qualification, discussed be found in the decision of the Benelux Court of at the end of this section of the judgment, to the Justice in Lucas Bols v. Colgate-Palmolive (1976) 7 effect that section 10(3) should not, as it were, be I.I.C. 420 where the mark CLAERYN for gin was taken too far, I do not consider the point to be sound. held to be infringed by use of the sign KLAREIN for Depending on the width of meaning one gives to the a detergent. The court said the following: word "reputation", the differentness of a particular It is ... possible ... that the goods to which [the use brand is either part of the "repute" of the mark or it is of] a similar mark relates, appeals to sensations of the part of the "distinctive character" of the mark: either public in such a way that the attraction and the way it appears to me to be expressly within what is "capacity of the mark to stimulate the desire to buy" contemplated as being within the ambit of the the kind of goods for which it is registered, are intended protection of section 10(3), in light of its impaired. closing words. Quite apart from the way in which section 10(3) is expressed, it seems to me that this The absence of any reference in section 10(3) to conclusion is also consistent with the general purpose confusion, particularly in light of the express of Article 5(2), section 10(3), as explained in Retical reference thereto in section 10(2), appears to me to 9 of the Directive, and in the passages from the two emphasise that the proprietor of a trademark can judgments of the German Federal Supreme Court claim that the use of a sign infringes his rights which I have quoted. notwithstanding the absence of any confusion between the sign and his mark. Mr Bloch submitted, Blurring occurs where the distinctiveness of a mark however, that in order for a claim for infringement to is eroded. A pithy explanation of blurring may be succeed under section 10(3), the owner of a mark will found in the observations of Sir Thomas Bingham normally have to establish confusion, at least in the M.R. in Taittinger SA v. Allbev Ltd  F.S.R. absence of being able to show real and substantial 641 at 678, where he said this: detriment. In my judgment, that puts a gloss on the The first plaintiff's reputation and goodwill in the natural wording of section 10(3), and indeed of description Champagne derive not only from the Article 5(2), which is not justifiable, or even helpful quality of their wine and its glamourous associations, as general guidance. It is normally inappropriate to but also from the very singularity and exclusiveness cut down an express provision of a statute, or indeed of the description, the absence of qualifying epithets of an EC Directive, unless it is plainly necessary to do so. It is conceivable that, as the jurisprudence on sweeping effect of preventing the use of any sign section 10(3) is developed by the ECJ and national which is the same, or similar to, a registered trade courts, Mr Bloch's suggestion will provide a good mark with a reputation; nor is section 10(3) intended working rule, but, at any rate at this comparatively to enable the proprietor of a well known registered early stage of its life, I do not think that section 10(3) mark to be able to object as a matter of course to the should even be treated as being subject to such a rule use of a sign which may remind people of his mark. of thumb, let alone such an implied term. It appears In at least three decisions in the Trade Mark Registry, tolerably clear to me from the terms of section 10, it has been held that what section 10(3) is intended to that confusion is not a necessary ingredient to prevent is the use of a sign which exploits the establishing infringement under section 10(3). distinctive character or repute of an established trade Indeed, this now seems to be established by mark in either or both of the ways contemplated in authority: see Sabel  R.P.C. 199 at 223: the paragraphs (a) and (b) of that subsection: see Audi- same view was taken by dvocate-General Jacobs in Med Trade Mark  R.P.C. 863; Oasis Stores General Motors  All E.R. (EC) 865 when he Ltd's Trade Mark Application  R.P.C. 631 and said at 870 (paragraph 26): Visa (unreported, cited above). [T]he issue was resolved by the [ECJ] in its judgment in Sabel ..., which made it clear, when Without due cause ruling on Article 5(1)(b) that Article 5(2) did not require confusion. The effect of the words "being without due cause" in section 10(3) is a matter of substantive dispute (This is also consistent--or at least not inconsistent-- between the parties; there was also a more minor, with the view expressed obiter by Aldous L.J. in technical argument as to which of the parties had to British Telecommunications PLC v. One In a Million discharge the onus of proof on this issue. I shall Ltd  F.S.R. 1 at 25.) consider the substantive issue first. Mr Arnold contended that the effect of section 10(3) On behalf of Premier, Mr Bloch contended that this was that the stronger the distinctive character and is not a case where the alleged infringer, TEL, can be reputation of a particular mark, the easier it would be said to be using the sign, in this case TYPHOON, to establish detriment to it. In my judgment, that is a "without due cause". His contention was that that good point. First, it seems to follow as a matter of expression effectively means "in good faith" or "for inevitable logic from the way in which section 10(3) good and honest commercial easons", or at any rate, is expressed, as supported by the above discussion. not for a purpose which involves in any way seeking Secondly, I think that the contention is supported by to benefit from, or to harm, the goodwill established the reasoning of the ECJ in General Motors  by Premier and any other proprietor or licensee of the All E.R. (EC) 865 at 878 where one finds this: '126 Mark. 23. ... it is only where there is a sufficient degree of knowledge of [the earlier] mark that the public, If this construction of the effect of the words "being when confronted by [a] later trade mark, may without due cause" is correct, then I would accept Mr possibly make an association between the two trade Bloch's submission that TEL's use of the sign cannot marks, even when used for non-similar products or fall within section 10(3). Mr Battersby explained services, and that the earlier trade mark may how, with the benefit of suggestions and advice from consequently be damaged ... others, he decided to adopted the sign TYPHOON for 26. The degree of knowledge required must be the kitchenware marketed by TEL in this country. On considered to be reached when the earlier mark is the basis of his evidence, and of my view that he was known by a significant part of the public concerned an honest witness, it does appear clear that he by the products or services covered by that trade determined on the name for its own merits (as he mark. perceived them) in relation to kitchenware. Any 27. In examining whether this condition is similarity with, let alone any benefit from any fulfilled, the national court must take into possible similarity with, the TY.PHOO mark formed consideration all the relevant facts of the case ... no part of his thinking. Indeed, it was not referred to in any relevant discussions leading up to his decision Finally, it is right to mention that, as Mr Arnold also to adopt the sign TYPHOON, save on the isolated submitted, section 10(3) is not intended to have the occasion to which I have referred, namely Mr Lum's note, which either Mr Battersby did not see or (as I the use of the allegedly infringing sign in connection think is more likely) Mr Battersby saw, although it with the defendant's goods is "with due cause"; it also made no significant impression on him. requires him to show that although the use of the sign might otherwise be said to "take unfair advantage of However, I do not consider that the interpretation or is detrimental to" the mark, the advantage or advanced by Mr Bloch of the words "being without detriment are not "without due cause". due cause" is correct. First, particularly having considered the general purpose and effect of section Thirdly, it appears to me that this conclusion is 10(3), it appears to me that such a construction of the consistent with the view of the Benelux Court in words "being without due cause" renders the effect of Lucas Bols  I.I.C. 420 at 425, where, when the section unpredictable and, in some cases, discussing the meaning of "without justifiable positively unfair. The purpose of section 10(3) is, as I reason" which appeared in a similar context in the have indicated, to protect the value and goodwill of Uniform Benelux Trade Mark Act as "without due trade marks, particularly in cases where they are well cause" in section 10(3), the Court said this: known, from being unfairly taken advantage of or What this requires, as a rule, is that the user (of unfairly harmed. I accept, of course, that, as the very the mark) is under such a compulsion to use this very use of the word "unfairly" demonstrates, the section mark that he cannot honestly be asked to refrain from is not intended to confer absolute rights on trade doing so regardless of the damage the owner of the mark proprietors in all circumstances. However, it mark would suffer from such use, or that the user is does not appear to me likely that it could have been entitled to the use of the mark in his own right and envisaged that the use of a sign for goods which may does not have to yield this right to that of the owner in practice very heavily damage the value of a mark, of the mark .... whose development and exposure has been the subject matter of considerable effort and expense by On the same page, the court went on to suggest that a the proprietor, should be immune from attack by the "justifiable reason" may be "if the user can assert an proprietor of the mark simply because the sign was older right than that of the [registered proprietor]" but innocently adopted. Such a construction of section went on to emphasise that whether the alleged 10(3) would not only be capable of producing an infringer can establish a "justifiable reason" must be unfair, even a capricious, result so far as the "resolved by the trial judge according to the proprietor of the trade mark is concerned; it would particular facts of each case". also encourage those considering adopting new signs to carry out a minimum amount of research, and In my judgment, those observations represent the could fairly be said to be conferring an advantage on approach which should be adopted to the words the ignorant and lazy over the well-informed and "being without due cause" in section 10(3), although careful. Furthermore, it seems to me undesirable that it is fair to say that two criticisms can be made of this the outcome of a case where the court is satisfied that conclusion. The first criticism raises a practical the allegedly infringing sign will seriously damage problem, in the sense that this construction could be the reputation of the registered mark should depend said to produce a degree of uncertainty; the second on the view which the court forms as to the point which may be made is that, on this knowledge, subjective intentions, and even the construction, it is not entirely to see what function the unconscious desires, of the owner of the allegedly words "being without due cause" actually have. So infringing sign. far as the practical problem is concerned, I do not consider that it has a great deal of weight. Most cases Secondly, although I accept that the words "being of alleged trade mark infringement turn on their own without due cause" are somewhat opaque in their particular facts; further, the protection potentially effect, I consider that they have to be read as not accorded to a trade mark proprietor by section 10(3) merely governing the words "the use of the sign", but can be pretty wide. It does not therefore seem to me also as governing the words "takes unfair advantage inappropriate that the tribunal considering the of, or is detrimental to". Section 10(3) must read in question of infringement under this provision is a commercially sensible way. Bearing in mind its accorded some degree of flexibility as to how the overall purpose, it appears to me that (without at this provision is to be enforced. It should be made clear stage intending to indicate where the burden of proof that I am certainly not suggesting that the court has lies) it requires the defendant to show not merely that some sort of roving commission or wide discretion; the observations I have quoted from Lucas Bols are provision, it is up to him to establish each of the quite clear on that point. prescribed statutory ingredients necessary to establish infringement. However, as I see it, the words "being So far as the second criticism of my conclusion is without due cause" although not plainly expressed as concerned, it is fair to say that it is not easy to see such, really represent a proviso or exception to the how the use of a sign could take "unfair advantage" generality of section 10(3). In those circumstances, if of a registered mark and yet be not "without due an alleged infringer, such as TEL, wishes to rely on cause". In my judgment, however, there are two those words, it is up to it to establish that it falls answers to that point. First, it is conceivable that, in within the exception, rather than up to a proprietor of certain circumstances, the court might conclude that, the mark to establish that the proviso does not apply. notwithstanding the fact that the alleged infringer's It is fair to say that this is a conclusion I would have use of a sign took "unfair advantage" of a mark, this reached even if I had held that TEL's analysis was was outweighed by the use being with "due cause", correct. within the limited meaning of that expression as explained in Lucas Bols  7 I.I.C. 420. It follows that Premier will succeed in establishing Secondly, the words "being without due cause" apply infringement under section 10(3) provided that it can not only to a case of alleged unfair advantage, but show that TEL's use of the TYPHOON sign "takes also to a case where the use of the sign is allegedly unfair advantage of" and/or "is detrimental to" "the "detrimental" to the mark: there is no difficulty in distinctive character or repute of the [TY.PHOO] envisaging circumstances where a "detrimental" use mark". Premier's case is now based solely on could not be "without due cause" within the sense I detriment, as Mr Arnold (rightly I think) abandoned have suggested. what was always Premier's secondary argument based on unfair advantage. Having come to this conclusion as to the meaning and effect of the words "being without due cause" in Detriment: Premier's case in summary section 10(3), it appears clear to me that those words do not assist TEL in the present case. Its use of the In summary, Premier's case that TEL's use of the TYPHOON sign in relation to its kitchenware started TYPHOON sign causes and will cause detriment to little more than a year ago, and only a very short time the distinctive character or repute of the TY.PHOO before these proceedings were begun by Premier. trade mark is as follows: Indeed, TEL did not wait to see if its application to 1. The very close similarity between the sign and register the TYPHOON sign was challenged by the mark, coupled with*793 the close connection anyone before it launched its kitchenware under that between kitchenware and tea, result in members of sign. Premier's TY.PHOO mark has been in the public associating TYPHOON with TY.PHOO. substantial commercial use for nearly a century, and This will be exacerbated because TEL normally uses has been on the register for over 70 years; it is a very the TYPHOON sign with similar typography (capital well known, and plainly a very valuable, mark. In letters with a large capital T) and similar colouring these circumstances, I have no real hesitation in (white on red) to that normally used for the reaching the conclusion that, if Premier can otherwise TY.PHOO mark by Premier. In this connection, succeed in its claim for infringement under section Premier relies on the survey evidence, which I have 10(3), TEL obtain no assistance from the words mentioned, and, albeit to a lesser extent the scene in "being without due cause" in that section. "Fools and Horses", to which I have referred; 2. The conclusions I have reached on the facts of this (a) The use of the sign in such circumstances will case, whether Premier's analysis of the law is correct lead to blurring, as it will reduce the uniqueness of (as I believe to be the case) or if TEL's analysis is the TY.PHOO mark as a brand name in the kitchen; correct, are reached irrespective of where the onus of (b) The use of the sign in such circumstances will proof lies. However, it is right to record that in my also lead to tarnishing, as the mark's brand image is view on either analysis the onus of proof would rest associated with what Mr Arnold called "the British on TEL. I cannot pretend that the point is institution of the cup of tea", whereas the use of straightforward, because there is obvious force in Mr TYPHOON will give rise to unfavourable Bloch's contention that, where a proprietor of a trade associations, namely the destructive power of tropical mark alleges infringement under a particular statutory cyclones. In this connection, Premier relies upon a survey it commissioned in connection with the 100 interviewees in four different towns, a further proposal to launch the TY.PHOO mark in the United 216 people were interviewed in four different cities. States, which demonstrated that a fair number of The interviewees were shown a card with the consumers reacted negatively because of the mark's TYPHOON logo and asked: "What kind of products visual and/or aural similarity to the words typhoon do you think are sold under this name?", to which 52, and typhoid: as a result, Premier did not go ahead approximately 16 per cent, mentioned TY.PHOO, with the proposed launch. TY.PHOO tea or TY.PHOO tea bags, and a further 102, approximately 32 per cent, mentioned tea. The I shall consider those contentions in turn. next question asked of all interviewees was: "Why do you say that?" to which 87, approximately 27 per Detriment: association cent, mentioned TY.PHOO even though they had not referred to it in the first question. The third question asked was whether the interviewees would be Some of the evidence and arguments relating to the surprised to be told that kitchen products were sold question of association between the sign and the '126 under the TYPHOON name, to which 209, Mark were similar to those relating to the question of approximately 66 per cent, said they would be confusion between the sign and the defensive marks. surprised, and 87, approximately 27 per cent said However, it is obviously important to bear in mind they would not be surprised. (For completeness, I that, although there is an inevitable degree of overlap, should mention that the question asked of the first or at least of similarity, between the two questions, 100 interviewees were slightly different from those they are quite distinct, involving a different issue asked of the subsequent 216, but nothing hangs on (namely association as opposed to confusion) and that.) different marks (namely the '126 Mark as opposed to the defensive marks). Before turning to the specific evidence and argument on association, it is right to Although one or two criticisms were made by Mr emphasise that Premier's task to establish association John Barter, a very experienced market researcher with the '126 Mark is rather easier than to establish called on behalf of TEL, I am unpersuaded that the confusion with the defensive marks. First, at least in survey was unsatisfactory so far as its procedure and general, it appears to me to be less hard to establish technique were concerned. Indeed, Mr Barter association between a sign and a mark than to described the survey as having "been executed to a establish confusion between them. In this connection, reasonably satisfactory standard". He also quite despite the closing words of section 10(2), I believe rightly accepted that the answers to the first two that confusion and association are different concepts, questions showed "a very high level of association" although confusion could be said to be a particular between the TYPHOON logo and TY.PHOO tea type of association, depending how widely one (whether expressly by brand or not). defines the latter word. Secondly, with its established reputation, the '126 Mark has an acquired, indeed a The survey helps confirm certain points which were very substantial acquired, reputation, as well as an either accepted or were not hotly contested, by TEL. inherent distinctiveness, whereas, as already Thus, the results of the survey show, to my mind, that mentioned, the defensive marks really stand or fall on TY.PHOO is a name which is very well known their inherent distinctiveness. indeed, and that, albeit not necessarily when it is used in connection with specific products other than tea I have already discussed the visual and even greater and tea-related goods, the word or sign TYPHOON aural similarity*794 between TYPHOON and puts people in mind of TY.PHOO. TY.PHOO. While plainly not conclusive, or indeed anything like conclusive, it seems to me that this is a However, I am not persuaded that the results of this fact on which Premier can fairly rely on the issue of survey take matters much further so far as Premier's association. case on section 10(3) is concerned. There was much in Mr Barter's observation that the survey: Secondly, there is the evidence of the survey which Merely establishes that if people are shown a card Premier commissioned from NOP Consumer. This with a name on it which differs by only one letter survey was based on research carried out in February from a very well known brand name, a substantial and March 1999. After an initial pilot scheme with minority of them will mention that brand name [and a significant further proportion will be prompted to identify the goods with which the brand name is hardware products and tea. However, on closer associated] when they are prompted to make some examination, it seems to me that there is a some what sort of association [words added by me]. greater closeness between the two types of product than might appear at first sight. First, TEL's products There is also force in what Mr Barter went on to say: are connected with the kitchen and/or food and drink, This does not in any way establish that if people and tea itself is obviously connected with items such were to encounter the TYPHOON brand of as cups, mugs, spoons, kettles and teapots. Secondly, kitchenware in an ordinary market place situation although tea and kitchenware are either sold from such as hardware shop of a department [store] they different sorts of shops (namely groceries or would be confused and might believe that the goods hardware shops) or from different areas in a had something to do with TY.PHOO. supermarket, there are a substantial number of shops in which both types of products might be sold. The survey establishes a significant link in the minds Specialist kitchenware shops are now frequently of the public between the sign TYPHOON and the found not merely in large towns and cities, but also in mark TYPHOON and TY.PHOO tea in a moderately small towns, and they normally sell tea and coffee (as non-leading way. However, there is an obvious well as, for instance, salt and pepper) in addition to leading aspect to the first question: it puts the kitchenware. Further, one company, Whittards of possibility of types of products being connected with Chelsea Ltd, has rather more than 100 retail outlets in the word TYPHOON, written in white capitals on a England; as well as selling many different brands and red background. Further, although the third question styles of tea and coffee, it also sells some hardware in clearly linked the sign TYPHOON to kitchenware, connection with drinking, as well as plates and some there is something of a gap in the questions, in the other hardware connected with eating. sense that there was no question which directly addressed the issue of the degree of connection or I now turn to the evidence relied on as negating the association, if any, in the minds of the public between likelihood of there being an association in the minds the sign TYPHOON when used in connection with of the public between the sign and the mark. First, TEL's kitchenware, or kitchenware generally, on the there is the evidence given by Mr Battersby, MR one hand, and on the other hand, the mark Gordon and Mr Marchant, both in relation to the TY.PHOO for Premier's tea. In my judgment, unlikelihood of confusion or even association, and in particularly given the very substantial acquired relation to the typical purchaser and potential reputation of the mark TY.PHOO in relation to tea, purchaser of kitchenware to which I referred in the especially if written in white and capital letters on a penultimate section of the previous part of this red background, it is scarcely surprising that a large judgment. The more careful the purchaser, the less proportion of the public, if asked specifically what likely he or she is to make an association based on a products they would expect to be sold under the sign, mistaken reading of the sign. However, that point is answer TY.PHOO and/or tea. It does not necessarily of slight force. More significant, perhaps, were the follow that anything like that proportion of members observations of Mr Gordon and Mr Marchant which I of the public or indeed any members of the public, quoted when considering the question of confusion would give the same answer if they were shown the under section 10(2). It appears to me that those sign specifically attached to, or otherwise identified observations apply also to the question of association with, a different product, namely kitchenware, and under section 10(3). While confusion is self-evidently were then asked the same question or were asked to difficult to establish in practice, particularly when the make an association. Even then, one might have to goods sold under the allegedly confusing sign are of exercise caution, because there is an obvious, and a high quality (and are therefore unlikely to be the potentially significant, difference between an subject matter of much complaint), it seems to me involuntary, and quite possibly subconscious, that, if customers do associate the sign with the mark, assocation in the minds of a consumer, when looking retailers of kitchenware under the sign would be at kitchenware with the TYPHOON mark, and a more likely to hear observations from customers considered, prompted, and articulated association in indicating such an association between the sign and the somewhat artificial circumstance of a survey. the mark. However, because association can often be subliminal and because, even when conscious, there Thirdly, there is the nature of the products. On the is no particular likelihood of it being mentioned by face of it, there is a substantial difference between the customer to the retailer, it appears to me that the expert evidence called by TEL is of limited value on association will occur in comparatively few cases and the section 10(3) issue, as well on the section 10(2) that, in those cases, the degree of association will not issue. However, as I mentioned when dealing with be particularly strong. section 10(2), the expert evidence extends to the opinion of the witnesses as well as their experience. So far as the proportion of people who will make the connection is concerned, I do not consider that it On the other hand, there are other facets of the would be anything like the quantity which might be evidence called by TEL on this issue which I do not suggested by an uncritical application of the results consider take matters, significantly further. First, of the survey, which show that nearly half those there are a number of trade mark registrations, or interviewed connected the sign TYPHOON with applications of trade mark for the sign TYPHOON. TY.PHOO and/or tea when asked what products Such registrations, let alone applications, are not would or might be sold under the sign. As I have evidence of use (see e.g. in British Sugar  said, this question does not mirror the situation with R.P.C. 281), and therefore can take matters no which I am concerned, namely where the TYPHOON further. The same point can be made about another sign is on, or connected with, TEL's kitchenware aspect relied on by TEL, namely registrations of goods. In any event the question is a leading one, in companies whose names include the word that it prompts people to think of products being sold TYPHOON. In any event, even if those companies under the sign. Add those two factors together, and trade, the goods or services with which they are one gets a position rather removed from the reality involved and the extent of their trade are matters of with which the court has to grapple. On any view, speculation. I am also unpersuaded that mere this justifies a substantial reduction from the just evidence of internet websites containing the name under 50 per cent that could be said to have made the TYPHOON takes matters much further, save that association according to the survey; logically, there is they do establish use of the sign. In this case, most of no reason why the deduction should not be to zero. It the websites appear to be American or Japanese, and is not possible on the evidence to express a view as to it is unclear to what extent any of the goods or the likely proportion of customers who would make services offered on those websites are available in the the association, but I am satisfied that it would be United Kingdom. TEL also relied on the promotional closer, indeed far closer, to zero than to 50 per cent. literature of two companies, which do appear to trade In this context, language is not only imprecise, but it in the United Kingdom, and whose goods are sold can mean different things to different people, and under the name TYPHOON. It is unclear how long indeed different things to the same people in different the goods have been available in this country, and in contexts. With that qualification, I would say that the what quantities, if any, they have been sold. While it proportion of customers who would make the would be wrong to characterise TEL's evidence in association would not be substantial, but would this connection as all worthless, the furthest it goes is probably be significant, in terms of percentages; I do to show that the sale of goods under the sign not think it could be characterised as de minimis. If TYPHOON in two fields very far from tea and required to to identify the percentage, which I do not kitchenware, namely in motor scooters, and in believe I am, I would go well below 5 per cent. watersports clothing and quipment, has taken place to an unspecified extent and for an unspecified period Furthermore, the association made by this without any apparent damage to the TY.PHOO comparatively small, but not insignificant, proportion mark. It does not seem to me that provides much of a of customers would not be particularly deep or reliable basis for drawing conclusions as to the likely particularly commercially significant. Some people, public reaction to the use of the sign TYPHOON in perhaps the more heuristically inclined, from time to relation to kitchenware. time play mental games with words and letters, particularly when bored or in idle moments. It is In light of the evidence and argument discussed those sort of people, I believe, who would make that above, I have come to the conclusion tht it is more type of association between the sign and the mark. I likely than not that, in the minds of some consumers, consider that this association could be said to there will be a degree of association between the impinge on TY.PHOOqua the '126 Mark, because TYPHOON sign as used by TEL in connection with the reason any such person would think of its goods and the TY.PHOO mark in relation to tea TY.PHOO would be because he knew of that name as used by Premier. However, I consider that such an as a brand of tea, and, conceivably in a few cases, also because of the connection between TEL's reverse order. products and tea. In my judgment, that would be the only type of significant*798 association which Detriment: tarnishing members of the public seeing the sign TYPHOON on TEL's products would make, so far as the TY.PHOO The contention that a similar, or indeed identical, mark is concerned. sign would lead to the tarnishing of a mark due to potentially damaging connotations associated with Accordingly, albeit to this rather limited extent, I the sign being then linked with the mark is not an accept Premier's case under section 10(3) in so far as unfamiliar one. It was the basis upon which it involves establishing that TEL's use of the infringement was established in Lucas Bols TYPHOON sign would result in some members of (detergents being an unattractive association for gin) the public associating TYPHOON with TY.PHOO. and in three cases where a sign, either very similar to or identical with the mark, was used for condoms, Detriment: general leading to an association which was held "to impair [the claimant's] advertising power in regard to the However, in order to succeed under this first original goods and, moreover, to ruin their*799 alternative ground under section 10(3), Premier has positive image, at least as far as part of the public is to establish that the association is such as to be concerned". The three cases are the New York "detrimental as to the character or repute of the  District Court decision in American Express Co. v. Mark". As I see it, the mere fact that a proportion of Libra Approved Laboratories Corp., 10 U.S. P.Q. 2d the public associate the allegedly infringing sign with 2006 (financial services), the German Federal the claimant's mark does not of itself mean that the Supreme Court decision in Mars (1995) 26 I.I.C. 282 sign infringes the rights of the proprietor of the mark (confectionery) from which the quotation is taken at by virtue of section 10(3): something more, namely 289, and Visa (unreported, cited above, also detriment, is required. Indeed, Mr Arnold accepted concerned with financial services) where Mr Hobbs, that section 10(3) was not intended "to make it Q.C. also cited the observations from Mars. automatically objectionable for the use of a sign to remind people of a trade mark". He contended that The present case is slightly different from those what section 10(3) prohibited in this context, was the cases, in that Premier does not contend that the goods "use of a sign which exploits the distinctive character associated with the allegedly infringing sign will, or repute of the trade mark either positively or [as is because of the similarity of the infringing sign to its alleged by Premier here] negatively". This is a view mark, tarnish the value and effectiveness of the mark. which appears to coincide with that of Mr Geoffrey Indeed, Premier's case is close to being the converse Hobbs, Q.C., in Visa (unreported, cited above). of that. It is more that, because of the degree of connection between the product sold under its mark As I have found that, albeit to a limited extent, and the product sold under the sign, as well as the Premier has established the likelihood of an close similarity between the sign and the mark, some association between the sign and the mark in the members of the public may associate unattractive minds of at least some members of the public, the features inherent in the sign as a word with the next question therefore to be considered is whether, TY.PHOO mark, hence damaging the repute of that because of the association (or indeed for some other mark. reason) TEL's use of the TYPHOON sign is detrimental to the distinctive character or the repute In my judgment, Premier has fallen a long way short of the '126 Mark. In this connection, Premier put its of making out its case under this head. It seems to me case in two alternative ways. The first is that TEL's that Premier's case, as Mr Bloch argued, involves a use of TYPHOON will lead to blurring because (to number of steps, namely: quote from Mr Arnold's argument) "it will reduce the 1. Some people who associate the TYPHOON uniqueness of the TY.PHOO brand name in the sign with cyclones will also associate the TYPHOON kitchen". Secondly, there is Premier's contention that sign with TY.PHOO; TEL's use of the TYPHOON sign will cause 2. Some people will associate the TYPHOON sign tarnishing to the TY.PHOO brand image, because of with cyclones; its association with the destructive power of tropical 3. Some of those who associate the TYPHOON cyclones. I propose to deal with these contentions in sign with cyclones and who also associate the TYPHOON sign with TY.PHOO will also therefore fall in the third category would be effectively associate TY.PHOO with cyclones; insignificant, if indeed, there were any members of 4. Such association will cause significant the public who fell within that category. This appears detriment to the TY.PHOO mark. to me to follow as a matter of logic. As I see it, a person can only fall within the third category if he I have already found that there will be some people falls within both the first and the second category; in the first category, they will be a comparatively given that each of the first two categories is small proportion, and not nearly as many as Premier comparatively small, and given that there is no reason would suggest in reliance on the survey. On the basis why a person who falls within the first category could of the evidence I have heard, I believe that there will particularly be expected also to fall within the second be, if anything, even fewer people in the second category (and vice versa) logic indicates that the third category than in the first category. In support of its category must be very small indeed. However, it is case on the second point, Premier relies on four not merely logic which leads to that conclusion. factors, namely the results of the research effected on There is some evidence to suggest that, if anyone its behalf in the United States, the question raised by falls within the third category at all, it would be a an Australian importer of TEL's products, the scene very unusual case indeed. The mark TY.PHOO may from "Fools and Horses" and the evidence of Mr have unfortunate connotations in the United States, Thomas. I do not find any of those factors but the very fact that it is such a successful and impressive. valuable brand in this country suggests pretty strongly that it has no significant unfortunate It is understandable that Mr Thomas, with his connotations here, quite conceivably due to its responsibility for such a valuable and important mark successful promotion and development as a mark for as TY.PHOO, should be concerned about anything tea over the past century or so. In any event, it seems which could conceivably harm that brand name, but it to me unlikely, in the absence of any cogent obviously does not follow that any specific concern evidence, or indeed any primary evidence at all, that that he honestly has is reasonable or justified. I have the use of the sign TYPHOON in relation to already indicated that the scene from "Fools and kitchenware will trigger an unfortunate connection Horses" does not take matters much further. The fact between the destructive force of typhoons and the that the sign TY.PHOO (and therefore, presumably TY.PHOO mark, if that association is not already the sign TYPHOON) has an unfortunate connotation present in light of the long-standing use of the mark in the United States according to a survey carried out TY.PHOO in any event. under the supervision of a person, who has not given evidence as to the circumstances of the survey, I am fortified in this conclusion by the fact that, until strikes me as of precious little value to the question to closing speeches, Premier relied through Mr Thomas which Ihave to determine. Equally, what appears to not only on the adverse connection with the have been little more than a throw-away remark, destructive force of typhoons, but also with the which, if it represented a genuine concern appears to allegedly detrimental connection with the Orient have been alleviated in any event, by someone in generally. I have to say that this appeared to me to be Australia does not seem to me to take matters any a somewhat fanciful concern even when the case was further. While it is fair to say that none of the three opened and, by the time that Mr Thomas' cross- questions put to the participants in the survey would examination had been completed, it seemed to me to necessarily have been expected to elicit the be an argument which had no prospect of success, information, I note that none of them appears to have and one which Mr Arnold was therefore well advised suggested that the sign TYPHOON had an to abandon. I mention it because it illustrates that the unfortunate connotation in so far as the consumers in proprietor of a well known and very valuable brand this country were concerned. can persuade itself, honestly but misguidedly, of the detrimental effect on that brand of the use of another The third point in the chain of reasoning also appears sign, in circumstances where, on analysis, that to me to raise a difficulty for Premier. Given that concern can be shown to be misconceived. That has only a comparatively small proportion of the public happened, effectively admittedly, in the present case, would, in my judgment, fall within the first category at least so far as an allegedly detrimental connection and an even smaller proportion of the public would with the Orient is concerned. In my judgment, it has fall in the second category, the proportion who would also*801 happened in connection with the allegedly detrimental connection with the destructive power of 10(3). typhoons. In a passage in Mostert on "Famous and Well Accordingly, I reject Premier's case, in so far as it is Known Trade Marks" (1997), cited by Mr Arnold, based on tarnishing. I reach that conclusion without the concept of "blurring", is described in these terms taking into account the fact that the degree and extent at pages 58-59: of association in the minds of those members of the If, for example, the TIFFANY mark has become public who would associate TEL's use of the well-known in connection with jewellery, and it is TYPHOON sign with TY.PHOO would not be used on a multiplicity of other goods such as particularly extensive, in the sense that it would be chocolates, clothing, a motion picture house, and a more a matter of playing with words than anything restaurant, the likelihood that the TIFFANY mark else. However, it is right to add that the comparative will still exclusively call to mind its owner's shallowness of the association reinforces the jewellery products becomes increasingly diminished. conclusion I have reached. In agreement with Mr Bloch, on the evidence and Detriment: Blurring arguments I have heard, I have no reason to suppose that anything that TEL is doing in connection with its Premier's contention in this connection is that TEL's use of the TYPHOON sign will have the use of a sign, TYPHOON, which is very similar consequence that "the ikelihood that the [TY.PHOO] visually, and even more similar aurally, to the mark will still exclusively call to mind its owner's TY.PHOO mark, in relation to kitchen-related [tea] becomes increasingly diminished". The sign and products "inevitably and insidiously erodes" the the mark in the present case are not the same, and uniqueness of the TY.PHOO mark in relation to tea. there is no likelihood of confusion between them, and nothing in any evidence called on behalf of Premier, As mentioned, I accept that, by virtue of the or indeed on behalf of TEL, suggests any likelihood reasonably close similarity between the word and the of damage to the exclusiveness of the TY.PHOO mark and the rather more tenuous similarity between mark in relation to tea, save the concerns expressed kitchenware and tea, there will be members of the by Mr Thomas which I do not accept as justified. As public who will associate the sign with the mark. I have already observed, his responsibility is such However, I do not consider that Premier has made that it is not surprising if he over-sensitive on this out a case for contending that this association can score. properly be said to be "detrimental to the distinctive character or repute of the ... mark". In this case, while I consider that there would be an association in the minds of some members of the First, and most importantly, it does not appear to me public, I also am of the opinion that the proportion of that the existence of the association in the minds of a people who would make that association would be limited proportion of members of the public would small, and that the nature of the association would be result in a "lessening of the capacity of [the such as to involve little more, or indeed perhaps no TY.PHOO] mark to identify and distinguish goods", more, than playing with words. Largely because of namely tea, to quote from section 45 of the Lanham the visual and even greater aural similarity between Act. Nor do I consider that it would impinge upon the word and the sign, and, albeit to a much lesser "the position of exclusivity [Premier] acquired extent, because of the more tenuous connection through large expenditure of time and money" or between the goods for which TEL uses the sign and "could impair the originality and distinctive character tea, there are some people who would make an of [the TY.PHOO] mark", to quote from Quick association between the sign and the mark although it  G.R.U.R. 182. As I have mentioned, the mere is a sort of obvious word-play or word association. fact that the way in which the sign is used by TEL However, I am unconvinced that, even if one may give rise to an association between the sign and concentrates on the people in whose minds the the mark in the minds of some members of the public association is made, there would be any significant is, in my judgment, simply not enough on its own to effect, or even any significant potential effect, on the enable the proprietor of the mark, however well commercial value, force and effect of the '123 Mark known and valuable it may be, to invoke section (including the differentness of that mark). The only conceivable group, or perhaps sub-group, whose minds could be said to be effected in such a way as to TY.PHOO mark and/or Premier's tea being have any significant potential for such a detrimental comparatively small, but the association would not be effect would be those who make the association not a particularly significant one. Secondly, there would merely because of inherent similarity of the sign of be no confusion between the sign and the mark. the mark, but also because of the connection between Thirdly, the damage alleged by Premier would not be the goods for which the sign is used and tea. I of the sort discussed and established in cases such as consider that, in the context of the run of customers Lucas Bols or Visa. as a whole, this sub-group really can be treated as de minimis. Even if that were not right, I do not accept The fact that Premier's case involves no allegation of that, even in relation to people falling within this sub- confusion is certainly not fatal to its case under group, the existence of the association between the section 10(3); the fact that Premier cannot show that sign and the mark would cause any detriment TEL's use of the sign TYPHOON has diluted the whatever to the '123 Mark, or, indeed, to the reputation of the mark, as opposed merely to the differentness of the '123 Mark. differentness of the mark, is not fatal to Premier's case under section 10(3); the fact that only a small In expressing this view, I do not overlook the fact proportion of members of the public will make the that section 10(3) confers upon proprietors of trade association between the sign and the mark is not of marks, and particularly of well known trade marks, a itself fatal to Premier's case under section 10(3); the type of protection not so far afforded to them under fact that those members of the public who make the English law. However, it appears to me that, while, as association will not do so to any substantial effect already indicated, I accept that the concept of dilution may not on its own be fatal to Premier's case under is a useful one, one must be careful of applying it too section 10(3); the fact that Mr Thomas, tendered by blindly. If the fact that a sign is associated with a Premier as a witness of fact and an expert witness, mark by a small but not insignificant proportion of accepted that members of the public are not going to members of the public and only to a limited and have any greater difficulty in picking TY.PHOO tea verbal extent, is enough to amount to "dilution" of the from the shelves in the supermarket, is not fatal to mark, then I consider that dilution is a concept which Premier's case under section 10(3). However, when goes further than section 10(3). Indeed, to one takes all these facts together, and bears in mind concentrate on the concept such as dilution shows a that there is no other detriment which Premier can danger of departing from the words of the statutory identify as a result of TEL's use of the sign provision too readily. TYPHOON on its kitchenware, I cannot accept that the effect of section 10(3) is nonetheless to enable Secondly, this is not a case where confusion has Premier to establish that TEL infringes the '126 Mark been established. As already mentioned, I am quite its use of the TYPHOON sign. satisfied the confusion is not a necessary ingredient for establishing a claim under section 10(3). **** However, in a case such as this, where confusion has not been established, it is necessary for the claimant to find some other detriment before the case can be brought within section 10(3). If mere association between an allegedly infringing sign and a well established mark could in some circumstances be enough to constitute detriment to the mark within section 10(3), then, unless it was simply enough to establish that a significant proportion of the public would be likely to make the association, I would hold in the present case that the degree of association was, in the circumstances of this case, not enough for Premier to succeed. First, it appears to me that not only would the proportion of members of the public who associated with the TYPHOON sign, as used by TEL, with the Conclusions and reference to the ECJ In these circumstances, my conclusions are as follows: 1. Premier's claim for infringement under section 10(2) is dismissed; 2. Premier's claim for infringement under section 10(3) is dismissed; 3. So far as TEL's claims for revocation are concerned: a. The '270 Mark is revoked; b. The '276 Mark is not revoked, save to the extent of the references to combs, brushes, sponges and materials for cleaning. Not surprisingly, the question of a reference to the ECJ has been raised. Initially, I was sympathetic to the suggestion, at least in relation to some of the issues on section 10(3) and section 46(1). However, I would like further assistance on the point in light of my conclusions in this judgment. So far as section 10(3) is concerned, I have, in the main, accepted Premier's submissions on the law, although I have found for TEL on the facts. On revocation, by contrast, I have largely accepted TEL's submissions on the law, but, at least if my understanding is correct, I have largely found for Premier on the facts. Further, the question of a reference to the ECJ may be connected with the issue of a possible appeal to the Court of Appeal. END OF DOCUMENT