Direct Line has won its recent High Court battle to prevent a rival, esure Insurance, from registering as a UK trade mark images of a computer mouse on wheels.
Esure’s trade mark application provoked opposition by Direct Line, the owner of various UK and Community trade marks for images of a telephone on wheels. The opposition was upheld, and esure appealed to the High Court.
On appeal the Court considered: 1) whether the marks were similar; 2) whether there was a likelihood of confusion; and 3) whether allowing registration of esure’s image would take unfair advantage of or be detrimental to the distinctive character or repute of Direct Line’s trade marks.
On the first point, the judge found that the marks were similar, although he held that in assessing similarity a low threshold test would apply.
Turning to the second question of whether there was a likelihood of confusion, the judge ruled that in this case a likelihood of confusion could not be proven. But on the third question, the judge held that, if allowed, esure’s use of the image would take unfair advantage of Direct Line’s trade marks by trading off and exploiting the reputation that had become established in them – he considered that such use by esure would be parasitic in nature and unfair. For this reason, esure’s appeal was dismissed.