In Martin Lewis v Client Connection Ltd [2011] EWHC 1627 (Ch), the High Court of England and Wales awarded summary judgment in respect of infringement of Martin Lewis’ UKregistered trade marks. Mr Lewis demonstrated that his MONEY SAVING EXPERT mark was distinctive, thus there was a real prospect of the trial judge finding sufficient confusion.

Background

Martin Lewis, a television and radio advisor on personal finance, owned the MONEY SAVING EXPERT trade marks in relation to “advisory services relating to financial matters provided via an internet website”, registered in 2008 (but used since 2000). Mr Lewis operated moneysavingexpert.com, which contained advice and template letters enabling users to reclaim monies in relation to, inter alia, miss-sold payment protection insurance.

Client Connection operated a telephone-based claims management business, dealing with, inter alia, claims arising out of mis-sold payment protection insurance. Until September 2010, it operated under the name MONEY CLAIMING EXPERTS. Mr Lewis claimed that Client Connection made or caused to be made telephone calls whilst holding itself out as MONEY SAVING EXPERT, or was heard to describe itself as such. This, Mr Lewis said, amounted to trade mark infringement under Sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994. He applied for summary judgment. Client Connection mounted a counterclaim that the marks should not have been registered as they were purely descriptive and not distinctive.

Decision

Section 10(1): Use of Identical Mark

Mr Lewis claimed that the marks were aurally identical, a key issue as Client Connection contacted its potential customers by telephone. Mr Justice Norris refused summary judgment under this head for several reasons.

First, Client Connection did not admit introducing itself as “Money Saving Expert” and denied authorising or promoting the name’s use. Second, Mr Lewis claimed that if Client Connection did not use the mark, it used a sign that 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. Third, Norris J said that Client Connection did not use any sign for services that were identical with those of Mr Lewis since it provided its services over the telephone whereas Mr Lewis provided advisory services via a website.

Section 10(2): Likelihood of Confusion

Mr 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 callers 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.

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 Mr Lewis’ case. He had only to show a likelihood of confusion, not actual confusion.

Section 10(3): Reputation

Client Connection submitted that Mr Lewis’ marks were descriptive. Norris J agreed, but observed that as Mr Lewis had used the marks over an extensive period, they had acquired distinctiveness, affording them broader protection.

Having succeeded under Section 10(2), it was unnecessary to rule on Section 10(3). However, Norris J said he would have been persuaded that Mr Lewis would succeed under Section 10(3). By using MONEY CLAIMING EXPERTS, Client Connection was riding on the coat tails of Mr Lewis’ registered marks, benefiting from its power of attraction, reputation and prestige. Norris J also said that the association of Mr Lewis’ website with fee-based claims management procured by cold calling customers would have tarnished his marks.

Comment

Mr Lewis managed to show that his marks had acquired a relatively high level of distinctiveness. By September 2010, the template letters available on the website had been downloaded by users 967,000 times. In addition, it was quite clear from the evidence that there was capacity for confusion to arise, which, once similarity was established, is all that was needed to show infringement under Section 10(2).