Martin Lewis, a well-known television and radio presenter and newspaper columnist, has won a High Court ruling that his trademark MONEY SAVING EXPERT is a distinctive, protectable mark and that an unrelated company, Client Connection Limited (CCL), could be restrained from using the confusingly similar phrase 'money claiming experts' in its marketing calls to consumers.(1)
Section 3(1) of the Trademarks Act 1994 provides that trademarks may not be registered if they do not have distinctive character. However, such a mark may be registered if, before the date of application for registration, it has acquired distinctive character as a result of use.
Section 10(2) provides that a person infringes a registered trademark when, in the course of trade, a sign that is similar to a registered trademark is used in relation to goods or services that are identical or similar to those for which the trademark is registered, and where there is a likelihood of confusion on the part of the public (which includes a likelihood of association with the trademark).
Part 24 of the Civil Procedure Rules (CPR) states that the court may give summary judgment against a party on a claim if:
it considers that the defendant has no real prospect of successfully defending the claim or issue; and
there is no compelling reason why the case or issue should be disposed of at a trial.
Lewis is a well-known, award-winning campaigning television and radio presenter, newspaper columnist and bestselling author. He runs and owns one of the United Kingdom's most popular money advice websites, www.moneysavingexpert.com. The website offers advice on how to save or claim back money and contains template letters which visitors to the website may download and use. It has over 10 million users a month and over five million users receive the related 'Martin's Money Tips' email.
Lewis is also the registered owner of two UK trademarks (registered in 2004 and 2007) for the mark MONEY SAVING EXPERT. The registrations cover "advisory services relating to financial matters provided via an internet website". CCL operates a telephone claims management business which deals with various matters, including claims relating to mis-sold payment protection insurance. Until September 2010 CCL operated under the banner slogan 'money claiming experts' and made cold calls to consumers using the same name.
After being contacted by CCL, numerous consumers contacted Lewis, stating either that they were either confused as to the origin of the call or that they wished to be taken off Money Saving Expert's contact list. Based on the correspondence in question, Lewis alleged that CCL's use of the phrase 'money claiming experts' infringed his marks. He sued CCL for infringement and applied for summary judgment under CPR Part 24. CCL counterclaimed that the marks were not distinctive and were therefore invalid.
It was conceded that the services provided by the parties were similar. As such, the case hung on whether:
the marks owned by Lewis were distinctive and valid; and
the phrase 'money claiming experts', as used by CCL, was similar to the marks and gave rise to a likelihood of confusion.
On the issue of validity, the court accepted that the marks were descriptive to some degree; however, they were originally allowed for registration because they had acquired distinctiveness through use, under the proviso in Section 3(1) of the act. As such, the burden was on CCL to establish that the proviso had been wrongly applied at the time of registration. The judge considered that this was not the case. He highlighted the extent of the evidence that Lewis had provided at the time of the application for registration as showing that financial services professionals and the general public identified him (and no one else) with the phrase 'money saving expert'.
On the issue of similarity and confusion, the court confirmed that this was to be assessed by reference to the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect. The judge took each of the 10 recorded consumer calls and related emails in turn. It was found that three could not be connected to CCL. Moreover, a further three consumers were not confused - their emails included statements such as "I am sure these people have nothing to do with your site" and "[I] thought you should know given they are sneakily using your well built trusted name to rip people off". Three other consumers may have had some doubt and one was genuinely confused. The judge reiterated that Lewis did not have to show actual confusion, but merely a likelihood thereof (including a likelihood of association), and that in his view this was demonstrated beyond real challenge by the calls and emails.
Having taken the view that the marks were distinctive and had been infringed, the court decided that CCL had no realistic prospect of defending the claim at trial and awarded summary judgment to Lewis.
This case shows the importance of having a clear brand protection strategy and documenting the use of trademarks, brand names and consumer responses.
The phrase 'money saving expert' may seem to be descriptive. However, by keeping a dossier on its use and on the public's associations with the phrase, Lewis had been able to apply for and register a trademark. This registration, together with the email evidence provided by consumers, ultimately allowed him to prevent CCL from using the phase 'money claiming experts' in its calls. The case demonstrates both the success of Lewis's brand and business and the willingness of the courts to use summary judgment to resolve disputes swiftly in appropriate cases.
For further information on this topic please contact Lisa-Jayne Pickford or Jeremy Drew at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (email@example.com or firstname.lastname@example.org).
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