Monte Carlo takes a gamble, provides the fun

Taking a gamble. Société Anonyme Des Bains De Mer Et Du Cercle Des Étrangers À Monaco v Anglofile International Ltd (t/a Monte Carlo Casino Entertainment) [2013] EWPCC 38, is an 11 September decision of Katfriend Miss Recorder Amanda Michaels, sitting in the Patents County Court (as it used to be known) for England and Wales.  This Kat always enjoys reading what Amanda has to say, having read her books on trade mark law with interest (he has the complete set).
 
This case is yet another in recent times which, this Kat feels, need never have gone to court because the parties could quite sensibly have sorted out some sort of accommodation without comprising the integrity of either. The Société Anonyme Des Bains De Mer Et Du Cercle Des Étrangers À Monaco (mercifully abbreviated by the judge to 'SBM') owned the Casino de Monte-Carlo and enjoyed the state monopoly in relation to the provision of casino gaming services in Monaco. SBM was also the proprietor of a number registered Community trade marks and international registrations, including two marks consisting of the words "Monte-Carlo" and "Casino de Monte-Carlo" in respect of, among other things, casino services and related goods. Anglofile traded as Monte Carlo Casino Entertainment and provided what it called "fun casino entertainment", supplying tables and croupiers for playing casino games to entertain guests at weddings and large events. No gambling took place at these events, although guests could compete for prizes. Anglofile's domain name was www.montecarlocasino.co.uk.

SBM sued for trade mark infringement and passing off in respect of Anglofile's use of its trading and domain names. Anglofile counterclaimed for cancellation of SBM's registrations, maintaining that both marks contained the geographical term "Monte-Carlo" and that the Casino de Monte-Carlo mark also contained the purely descriptive word "casino".

Recorder Michaels dismissed both SBM's claims and Anglofile's counterclaims.

Comparison of services and marks

Anglofile's services were identical to those for which SBM's Casino de Monte-Carlo mark was registered. What's more, its names were moderately and reasonably similar to SBM's mark -- a mark that enjoyed enhanced distinctiveness in respect of the provision of certain gambling services. So far, go good for the Monegasque corporation.

Was there a likelihood of confusion?

From here onwards the pendulum swung in favour of the defendant. The average consumer of Anglofile's services was likely to give relatively high attention to them, both because of the price charged and also because the services would normally be booked for a one-off event: this would be of some degree of importance to the customer, who would have an interest in ensuring that Anglofile's services would enhance that event. It was therefore clear that no client would engage Anglofile without direct interaction first. This being so, there was no likelihood of confusion by the average consumer under Article 9(1)(b) of the Community Trade Mark Regulation in the sense that there was any risk that he might believe that Anglofile's services came from the same undertaking or one which was economically linked to SBM.

Might some sort of trade connection be imagined?  No, said the judge. There was no reason why the average consumer would think that Anglofile's activities were licensed by SBM. Realistically, despite the notional identity or similarity of the parties' respective activities, the way Anglofile was using its names would preclude any such likelihood of confusion.

Was there a taking advantage of the earlier marks' reputations without due cause?

If there was no likelihood of confusion, could SBM perhaps at least cash in on the immense fame of its name? No, it seemed.  Since no reputation had been proved for the Monte-Carlo mark, the claim for infringement under Article 9(1)(c) of the same Regulation had to fail. As for the Casino de Monte-Carlo mark, that mark had a reputation in relation to certain gambling services among those with an interest in such services. It was also possible that the mark would be called to the mind of the average consumer by Anglofile's trading and domain names, and the latter's use of its names in a manner which SBM could not control was detrimental to SBM's business. However, SBM could not establish that Anglofile was competing unfairly with it by using the names. Anglofile's of its names did not dilute, tarnish, or adversely affect the mark's function.

It was plain that the choice of names by Anglofile was no mere speculative whim: the company's predecessors in title had chosen those names many years before registration of the Casino de Monte-Carlo mark; both they and Anglofile after them had used those names consistently in relation to the same business. This being so, even if there was a possibility of detriment, Anglofile's use could not be said to be without due cause.

How about passing off

To succeed in passing off, SBM had to show that there had been a misrepresentation was made by Anglofile when it used its trading or domain names -- but there wasn't one. No-one viewing Anglofile's website, advertisements or Facebook page would likely have thought there was any connection between the two parties' businesses. It was not irrelevant here that there was no evidence of either confusion or deception and it was wrong to infer that such confusion or deception must somehow have occurred.

The counterclaim

In order to undermine the validity of SBM's registrations, Anglofile was insufficient to find that "Monte Carlo" was a geographical name; it had to be a name that was, or would be, associated with the particular goods or services within the specification of the marks attacked. Here there was no evidence to suggest that the public would see the name as indicating the geographical origin of anything covered by SBM's marks, and the matter was not so clear as to justify inferring that such an association should be made. As to the use of the word "casino", the services covered by the marks related to casino gaming or gambling of some kind. In all the circumstances, it was not appropriate to infer that SBM's marks were invalid.

This Kat notes with interest that while Anglofile, trading as Monte Carlo Casino Entertainment purports to offer "fun casino entertainment", most of the fun in this action was actually provided by SBM instituting proceedings in the first place and then being fended off by a party that had the benefit of no greater representation than that of its company secretary.

Says Merpel, the Men from Monaco have had a rough summer of litigation in the hostile terrain of the British Isles: this the second time in recent months that they have made themselves look utter plonkers in court.  First time round, they did a very good imitation of trade mark bullies when they took on a shop with the logo-line "The Monte Carlo Traditional Fish and Chips" in County Monaghan, Ireland (see T.M.R. Restaurants Limited's application; opposition by Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers, noted by the IPKat here), and this time round they've scarcely been making friends and influencing people.  Are they perhaps related to the owners of the trade mark Ballon d'Or?

The Man Who Broke the Bank at Monte Carlo here and here
Casino Royale here, here and here