Compass Publishing BV v. Compass Logistics Ltd. [2004] EWHC 520 (Ch)

High Court of Justice Chancery Division

The claimant Compass Publishing BV is part of a group of companies engaged in

185 Electrocoin, supra note 182, at paragraphs 120 & 121.

186 Electrocoin, supra note 182, at paragraphs 123 & 135.

187 Electrocoin, supra note 182, at paragraph 123.

188 Electrocoin, supra note 182, at paragraph 120.

business consultancy worldwide ("the Compass Group") and owns all the registered trade marks which are used by the group companies throughout the world, including the CTM

"COMPASS" that is in issue in these proceedings. It is registered for: Class 9 (computer programs; computer software; pre-recorded data-carriers), Class 35 (business consultancy;

business management consultancy; business organization consultancy; consultancy and advisory services based on comparative analysis) and for Class 42 (professional consultancy; consultancy in the field of information technology; comparative-analysis studies).¹⁸⁹

The defendant Compass Logistics Limited has traded under or by reference to the name or mark "Compass Logistics" although occasionally it has been abbreviated to

"Compass" alone. The company offers management consultancy services, which involves advising clients in relation to logistics and the supply chain. It offers project management services to assist clients in the implementation of the consultancy recommendations it makes.¹⁹⁰ Defendant uses its sign on business consultancy services within Class 35.¹⁹¹

The claimant alleges infringement of its CTM by defendant, but claimant and defendant dispute as to whether the defendant uses a sign which is identical to the registered mark. The claimant argues, first, that the defendant uses "COMPASS" alone.

This is the mark as registered. Second, it says that the sign "COMPASS LOGISTICS" is also identical to the registered mark.¹⁹²

First, the Court held that defendant infringed claimant’s CTM by using the sign

“COMPASS”. From time to time, defendant has referred to itself and the services it offers by reference to the sign "COMPASS" alone. Furthermore the word "logistics"

alludes to the type of work undertaken by the company. The most important part of the

189 Compass Publishing BV v. Compass Logistics Ltd. [2004] EWHC 520 (Ch) (24 March 2004), at paragraphs 1 – 2.

190 Compass, supra note 189, at paragraph 4.

191 Compass, supra note 189, at paragraph 10.

192 Compass, supra note 189, at paragraph 10.

company's name is the word "COMPASS". In these circumstances it is hardly surprising that the company refers to itself, both orally and in writing, as "COMPASS". It follows that, subject to the question of validity, defendant has infringed the CTM by the use of the sign COMPASS.¹⁹³

Second, the issue is whether defendant infringed claimant’s CTM by using the sign

“COMPASS LOGISTICS” under Article 9(1)(a) or under Article 9(1)(b). That is, are

“COMPASS” and “COMPASS LOGISTICS” identical for the purposes of Article 9(1)(a)?

The ECJ said that identity of the sign and the trade mark must be interpreted strictly, so the two elements compared should be the same in all respects without any modification or addition. However, the perception of identity between the sign and the trade mark must be assessed globally with respect to an average consumer who is deemed to be reasonably well informed, reasonably observant and circumspect. Since the perception of identity between the sign and the trade mark is not the result of a direct comparison of all the characteristics of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by an average consumer." In those circumstances, identity means that a sign is identical to the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer."¹⁹⁴

Under this approach, the Court held that "COMPASS LOGISTICS" is not identical to "COMPASS". The differences between these two are apparent and would be identified without difficulty or prior coaching by members of the public. There is no suggestion under this approach that noticeable differences should be ignored because they have only limited trade mark significance. It follows that the case of infringement under Article 9(1)(a) by the use of "COMPASS LOGISTICS" fails.¹⁹⁵

193 Compass, supra note 189, at paragraphs 11 – 14.

194 Case C-291/00, LTJ Diffusion SA v. Sadas Vertbaudet SA, 2003 ETMR 83, at paragraphs 50 – 54.

195 LTJ Diffusion, supra note 194, at paragraph 21.

Therefore, it is necessary to consider whether there is a likelihood of confusion and consequently infringement under the provisions of Article 9(1)(b). The Court held that there is a likelihood of confusion between defendant’s sign “COMPASS LOGISTICS”

and claimant’s CTM “COMPASS” in relation to its business consultancy services based on the following reasons:

1. Similarity of the services: Defendant has used its sign on identical services, that is, business consultancy services within Class 35.

2. Similarity of the marks: The dominant part of defendant's mark is the word

"compass". For many customers, the word "logistics" would add little of significance to it.

3. Association: It is likely that a significant section of the public would consider that

"COMPASS LOGISTICS" represents the logistics branch of the "COMPASS" service.

4. There is no suggestion that there has been any confusion in the market place between the activities of defendant under the sign "COMPASS LOGISTICS" and the claimant under the mark "COMPASS". Moreover, the question of infringement has to be answered by assessing the existence of a likelihood of confusion were claimant to use the mark "COMPASS" in a normal way in respect of all services covered by the registration, including for business consultancy services in the field of logistics, that is to say the same specialist field defendant operates in. Therefore, a lack of actual confusion in the market is not surprising, since claimant’s core activities are not in the logistics field and defendant's are.¹⁹⁶

In conclusion, defendant’s use of “COMPASS LOGISTICS” infringes claimant’s CTM under Article 9(1)(b).

In sum, from the seven United Kingdom decisions that were analyzed, the United Kingdom Community trade mark Courts always considered the similarity of the marks

196 Compass, supra note 189, at paragraph 25.

and goods or services, as well as the association that the public might make between the two marks. The distinctive character of the CTM was considered in most, though not all, cases.

However, the situation with the UK Community trade mark Courts was similar to the one with Spanish Community trade mark Courts. That is, not all of the seven UK cases analyzed assessed the distinctive character of the senior mark, even though this factor has been emphasized as one of the three factors on which the assessment of a likelihood of confusion particularly depends.

Moreover, the degree of attention of the relevant average consumer whether there were actual incidences of confusion were considered in most but not all the cases analyzed. One interesting fact worth mentioning is that whether the owner of the junior mark acted in bad faith was not considered in any of the cases, nor was the question whether there were any prior Community or national decisions involving conflicts between the same or similar marks.