At the Case Management Conference, with the consent of both parties, the Judge offered to provide a non-binding opinion on the merits of the infringement claim as this is currently being considered a potentially useful way to assist the early settlement of claims in the PCC.
In his opinion, HHJ Birss QC explained that on the basis of the material before him he considered there was a “strong case” that the Defendants would be likely to be found to infringe the Claimant’s marks.
The Judge did not address s.10(2) in any detail save for commenting that survey evidence in relation to confusion (as presented by the Claimant in this case) is susceptible to criticism.
In relation to s.10(3) TMA the Judge thought it “highly likely” that the Court would find that WAIST WATCHERS is a mark which will, in the mind of the ordinary consumer, form a link with WEIGHT WATCHERS and that link was one which would likely cause detriment to or take unfair advantage of the distinctive character or repute of the Claimant’s mark. He gave no opinion on whether the Claimant’s marks were tarnished by virtue of the Defendants’ quality control of its WAIST WATCHERS sandwiches. However, he accepted that the Claimant had no control over the quality or production standards (however good or bad) of the sandwiches and, since the public was likely to link the marks, the Claimant was loosing control of its reputation.
Given his opinion on infringement, the Judge explained that there was also a strong case that the trade mark registrations held by the Defendants were invalid.