Partner, Head of Amsterdam Office
Out-Law News | 27 Jul 2011 | 4:51 pm | 2 min. read
A telephone-based claims management service was "riding on the coat tails" of the mark by cold-calling customers under the name Money Claiming Experts, the judgment said.
Client Connection Ltd (CCL) had argued that Lewis' mark should not have been registered as a trade mark because it was "non-distinctive".
Lewis owns two UK registered trade marks for 'Money Saving Expert', relating to "advisory services relating to financial matters provided via an internet website".
His website, moneysavingexpert.com, was established in 2003 and claims to have over ten million visitors each month. It contains advice and template letters to enable users to save and claim money.
CCL used the name "Money Claiming Experts" to sell payment protection insurance (PPI) using cold-call telephone techniques until September 2010, the judgment said.
Ten witnesses contacted Lewis after receiving the calls to complain or warn Lewis that another company was using his name.
CCL's business model relied on "unprompted calls to consumers" who heard call centre staff introduce themselves as being from Money Saving Expert even if what was being said was something slightly different, Mr Justice Norris said.
Lewis' claim that CCL was using an identical trade mark was dismissed, however he was able to demonstrate that CCL was using a similar mark in relation to the same services in circumstances that would create a likelihood of confusion on the part of the public.
The company claimed the ten witnesses only amounted to a small sample of people called, and that most of the witnesses were aware the calls did not come from Lewis' website.
The judge told CCL that it was irrelevant whether the witnesses were actually confused, as Lewis only had to show they were "likely to be".
CCL's points "amount to no more than speculation that if there was a trial then something might turn up which might paint a different picture", the judge said.
"The evidence suffices to show a likelihood of confusion, unless there is something other than pure speculation to suggest that these witnesses might have been careless or stupid," he said.
The judge conceded that Money Saving Expert was a descriptive mark, but suggested that Lewis was "sufficiently known in the market" to benefit from extra protection under trade mark laws.
"In my judgment the claimant has demonstrated beyond real challenge that such is the level of distinctiveness of his use of the term 'Money Saving Expert' over an eleven year period... there is no real prospect of a judge at trial finding that there was insufficient confusion," he said.
My Justice Norris issued a summary judgment, used where the outcome of a case is such a certainty that a full trial is not needed.
He did not need to consider a third claim, that CCL had taken advantage of the trade mark in a way that was detrimental to Lewis' reputation, but said that he would have allowed the claim if necessary.
CCL was "riding on the coat tails" of the trade mark and "benefitting from its power of attraction, its reputation and its prestige. To suggest that there would have been any other outcome at trial is fanciful," the judge said.
Helyn Mensah, a barrister specialising in intellectual property law at Pinsent Masons, the law firm behind OUT-LAW.COM, said that Lewis's trade mark was saved by its distinctiveness.
"Whilst this decision represents an application of now well-established principles of trade mark law, it is a reminder that descriptive or semi-descriptive trade marks are not to be dismissed or underestimated.
The ultimate test is distinctiveness – provided a trade mark possesses distinctive character it is valid and can be relied upon against infringers, who will have to consider other means of defence," she said.
Technology law news is also available from Bootlaw, a free resource for technology start-ups, with regular events hosted by Pinsent Masons.
Partner, Head of Amsterdam Office