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Summary Judgment & Permission to amend - Martin Steven Lewis -v- Client Connection Limited (2011)

Written by Paul Bicknell on 18 July 2011

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Introduction

This case concerned an application made by the claimant for summary judgment. The defendant made an application seeking permission to amend its defence and mount a counterclaim. The counterclaim was in "classic terms" an attack on the rights which the claimant was enforcing in the claim. Namely two UK trade marks for "MONEY SAVING EXPERT" which the claimant operated under and by reference to: "advisory services relating to financial matters provided via an internet website".

The defendant is a claims management company which deals with mis-selling of payment protection insurance. It has been operating under and by reference to "MONEY CLAIMING EXPERTS".

The claimant alleged that the defendant had made a number of telephone calls holding itself out as Money Saving Expert or was describing itself as the same. The claimant alleged that such use amounted to trade mark infringement in particular by section 10(1), 10(2) and 10(3) of the Trade Marks Act 1994.

Purpose of Summary Judgment

The judge the jurisdiction under CPR 24 "properly deployed":

(a) Relieves the claimant of the necessity of incurring irrecoverable costs to prove at trial what can be established earlier:

(b) Allocates scarce resources to those litigants whose cases can only be determined at trial: and

(c) Protects the defendant from spending money on his own costs and from exposing himself to liability for the claimant's costs on the trial of an issue the outcome of which it can already be seen he has no real prospect of avoiding.

Summary Judgment: s.10(1)

The judge refused to order summary judgment for section 10(1) infringement because there was a real prospect that the claimant would not be able to show that the defendant used or authorised the use of the words "Money Saving Experts" in connection with its business.

The claimants also submitted that when the defendant called one of its customers it referred to Money Saving Expert that it was aurally identical and so section 10(1) bites. The submission was that "money...a...ing...expert" "quickly spoken" contained insignificant dissimilarities the exclusion of which rendered the use of the claimant's mark as identical use. The judge reasoned that on a summary judgement application he would give the benefit of the doubt in favour of the defendant.

Lastly the judge found that there was a real prospect of the defendant being able to at trial successfully defend the argument that it had used an identical mark in relation to services identical to that for which the claimant's mark was registered. Summary judgment was refused under s.10(1) infringement.

Summary Judgment: s.10(2)

The judge then ran through the evidence and stated that if that evidence was unchallenged it would be sufficient to establish infringement under s.10(2). It was found that Money Saving Expert was a name that had a reputation in the UK. Also with regards to the telephone calls referred to above, witnesses said that they thought that they heard reference to Money Saving Expert this showed that there was a real prospect of there being a likelihood of confusion. The court said that marks that enjoyed a high degree of recognition/reputation had a broader degree of protection than marks that did not: L'Oreal SA v OHIM (Trade Marks and Designs) (C235/05) (2006) ECR I-57 was applied. The court therefore granted summary judgment under this head.

Summary judgment s.10(3)

The court also added that the claimant's application would have succeeded under section 10(3) the court finding that there was a real prospect that the relevant consumer would have made a link between the two marks/undertakings.

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