Allan James gets ringing endorsement in esure case

Although he really hates real names that start so pretentiously with lower case letters, the IPKat is still willing to give you his thoughts on esure International Ltd v Direct Line Insurance plc [2007] EWHC 1557 (Ch), a decision last Friday from Mr Justice Lindsay in the Chancery Division of the High Court for England and Wales - and you can read the decision in full on BAILII.

Direct Line provided insurance and financial services direct to the public, mainly via online, email and telephone access. Back in 1990 - when telephones were still usually attached to their bases by wire coils - it starting using a somewhat irritating telephone-on-wheels device (right) in its advertising. Since this device obviously appealed to actual and prospective customers Direct Line has carried on using it ever since, spending vast sums of money to keep in in the public eye in connection with its services. Both national and Community trade mark registrations were duly secured.

esure was a direct competitor to Direct Line and ran its business in much the same way. In September 2004 esure applied to register as a mark a device consisting of a representation of a computer mouse on wheels (left) and pretty well simultaneously started using it in its advertising. Not amused, Direct Line opposed. In a whopping great decision of 44 pages (noted here by the erudite Kat) the hearing officer upheld that opposition: in his view the registration of the mark would be detrimental to the distinctive character of Direct Line's phone mark, contrary to s 5(3) of the Trade Marks Act 1994.

esure appealed, maintaining that the hearing officer - who was none other than the celebrated Allan James - had erred in his application of the relevant principles pertaining to the operation of s 5(3) of the Act. Lindsay J, dismissing the appeal, upheld the original decision: the hearing officer had fallen into no error of law in concluding that esure's mark would have a detrimental effect on the distinctive character of the Direct Line's mark and was quite right to refuse registration. The judgment runs to 133 paragraphs; it includes an extremely detailed survey of the relevant ECJ and domestic case law on the issue as well as a close application of the law to the facts. The judge also avoids making yet another UK reference to the ECJ himself.

Right: esure's new mouse - more cute than its predecessor and less liable to cause legal problems

The IPKat notes the judge's affirmation of the position taken by the Court of First Instance in Case T-215/03 Sigla v OHIM earlier this year that submissions of tarnishment that are not substantiated by at least prima facie evidence that a later mark will damage the repute of the earlier mark should not be entertained: the courts are there to decide issues on the facts - however threadbare those facts may be - and not to entertain mere speculation. Merpel adds, the argument that esure's applied-for mark would 'fetter' the prospects of expansion of Direct Line's mark was also rightly nailed: trade mark law deals with existing rights and not future developments.

Recycle your old phone here
Another annoying Direct Line trade mark here