Case No: A3/2012/0486 
Neutral Citation Number: [2013] EWCA Civ 219
IN THE COURT OF APPEAL ( CIVIL DIVISION )
ON APPEAL FROM THE PATENTS COURT
(MISS RECORDER AMANDA MICHAELS)
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: Wednesday 20th February 2013

Before:

LORD JUSTICE KITCHIN
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Between:

	Ghias t/a Griller 	
Respondent	
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Ikram t/a The Griller Original 	

Applicant	

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( DAR Transcript of 
WordWave International Limited
A Merrill Communications Company
165 Fleet Street, London EC4A 2DY
Tel No:  020 7404 1400  Fax No: 020 7831 8838
Official Shorthand Writers to the Court )

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Mr Mashood Iqbal ( instructed by Jinnah Solicitors) appeared on behalf of the Appellant.

The Respondent did not appear and was not represented
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Judgment
Lord Justice Kitchin:

1.	This is an application by the first defendant, Mr Mohammed Ikram, for permission to appeal against those parts of the decision of Miss Recorder Michaels handed down on 24 January 2012 and her consequential order whereby she held that Mr Ikram and the fourth defendant, Griller Original Limited, had infringed registered trade mark number 2326754 of the claimant, Mr Waseem Ghias, under section 10(2) of the Trade Marks Act 1994 and whereby she held that since 23 May 2011 Mr Ikram was liable as joint tortfeasor in respect of the infringements committed by Griller Original.

2.	Mr Ikram was refused permission to appeal on the papers by Mummery LJ by order dated 10 August 2012, but has requested that decision be reconsidered at an oral hearing.  Mr Ikram was represented at the trial by Mr Paul Dipré of counsel, but on this application has been represented by Mr Mashood Iqbal  of counsel, who has been instructed only very recently but lodged with the court yesterday a skeleton argument upon which he has founded his submissions this morning.

3.	The relevant background may be summarised as follows.  Mr Ghias is the proprietor of two registered trade marks: the first, referred to as “the logo”, is a device mark consisting of the word “Griller” with flame effects on either side.  This is the registered trade mark to which I have referred and in respect of which the Recorder found infringement. The other, referred to as “the device”, comprises the logo in a flame red colour together with the device of a chicken dressed as a waiter. 

4.	In 2003 Mr Ghias opened a restaurant trading under the name Griller from premises in Chadwell Heath offering grilled chicken and other fast food.  Over the years Mr Ghias's business has expanded and at various times he has had between 10 and 14 franchise outlets.  His turnover has, according to his own evidence, increased from about £35,000 to about £90,000 per annum.

5.	Mr Ikram was sued in these proceedings in relation to a business trading at 527 Cranbrook Road, Ilford, Essex and at 84 Hermit Road in London E16.  The Hermit Road business is now run through Griller Original, the fourth defendant, which was incorporated on 8 September 2010.  Mr Ikram is the director of that company. As the Recorder explained at paragraph [24], the fascia and signage of the Cranford Road premises used the word “Griller” in large red letters with a capital G and with the words "The" and "Original" in tiny red letters.  On the projecting sign above the fascia board the only word which appeared to the Recorder to be legible was the word Griller.  The fascia advertised that the business sold chicken burgers and pizza and an advertisement for grilled chicken and fish and chips was posted on the window.  The Hermit Road premises carried a different style of shop signage with the wording “Griller” shown in white letters on a black oval background and without, to the Recorder's eye, any apparent use of the words "The" or "Original".  

6.	The Recorder rejected Mr Ghias's allegations of infringement of his registered trade marks under section 10(1) of the Act on the basis that the signs complained of were not identical to either of his registered marks. 

7.	The Recorder then turned to the allegation of infringement under section 10(2) of the Act.  She considered that it was clear that Mr Ikram and Griller Original had used the signs complained of in relation to services which were identical to those in respect of which the marks were registered.   She then proceeded to compare the marks and signs for visual, aural and conceptual similarity.  She considered there was a visual similarity between the signs complained of and the logo.  Although the flame element of the logo was far from negligible, she considered the overall impression created by that mark depended heavily on the word “Griller”.  In her view that was the dominant feature of the mark or at least it had an independent distinctive role within the mark. It was also clear to her that the dominant element in the signs complained of was the word “Griller”. Further, where that word was used in conjunction with the words "The" and "Original", they were used in so small and insignificant a manner as to leave the word "Griller" as the dominant element of the sign.  Where the word was used on the oval background, it was again the word “Griller” which was the dominant element of the sign.  She held that there was also an aural similarity between the signs and the logo, and so also there was a conceptual similarity between the signs and the logo because they all included the word “Griller”, which was, she found, allusive of the services offered. By contrast the similarity between the device and the signs was far lower given the more complicated composite nature of the device.  
8.	The Recorder then turned to consider whether the similarity led to a likelihood of confusion and, in so doing, took into account the identity of the services, the nature of the services and the average consumer and the degree of distinctiveness of the marks.

9.	Overall she concluded that there was a real likelihood of confusion between the signs and the logo but not between the signs and the device.  Infringement of the logo was therefore established under section 10(2) of the Act but the claim for infringement of the device failed.  

10.	Turning to the claim under section 10(3), the Recorder considered that this failed because it had not been established that the registered marks were known by a significant part of the relevant public and consequently did not have the necessary reputation to found the claim. 

11.	Finally, the Recorder considered whether Mr Ikram as a director of Griller Original had been personally involved in the commission of the infringements by that company  to an extent sufficient to render him liable as a joint tortfeasor.  She found that from 24 May 2011 Mr Ikram had been the sole person responsible for running the business and had actively pursued its intention to use a sign The Griller Original.  In the circumstances she found that he was a joint tortfeasor with Griller Original from that date. 

12.	Mr Ikram originally sought permission to appeal on a number of grounds attached to his application.  They have now been supplemented by the grounds set out in the skeleton argument provided by Mr Iqbal to which I have referred.  I shall address them all in turn.

13.	First it is contended that the case against Mr Ikram was made up by Mr Ghias and has been pursued because Mr Ghias holds a grudge against him.  Mr Ikram also contends that Mr Ghias has been trading in an unfair manner with regard to his own customers and amongst other things has been overcharging them. 

14.	There was no evidence before the Recorder of any of these matters and, if Mr Ikram wished to raise them, he could and should have done so at the trial, but in any event it seems to me that they are irrelevant to the particular issues which the Recorder had to decide, namely the manner in which Mr Ikram had been trading and whether or not the signs used by Mr Ikram were so similar to the logo and the device as to give rise to a likelihood of confusion.

15.	Mr Ikram next contends that the solicitors then instructed by him, ATM Law Solicitors, colluded with the solicitors acting for Mr Ghias to Mr Ikram's disadvantage.  This is a most serious allegation, which once again was not raised at the trial and, moreover, I see no basis for such an allegation on the materials before me now.

16.	Mr Ikram then contends that the Recorder has fallen into error in making her substantive findings.  It is this contention that Mr Iqbal has elaborated in his skeleton argument and in his oral submissions.  It is said, first, that the goods and services provided under the signs complained of are different from those of Mr Ghias, and that the signs themselves are not sufficiently similar to the logo or the device as to give rise to a likelihood of confusion.  Mr Ikram also contends that there is no case for infringement under section 10(1) or section 10(3) of the Act. I can dispose of this second category of points straight away.  The Recorder has not found infringement under either of these latter two provisions. Her finding of infringement was limited to the allegation advanced under section 10(2).  

17.	As for section 10(2), the Recorder compared the services in relation to which the signs complained of have been used with those the subject of the registrations and concluded that they were identical, in that they fell within the specifications.  She then addressed the similarity of the signs to the logo and the device and she did so separately and with very great care.  As I have explained, she concluded that, taking into account all relevant matters, there was indeed a likelihood of confusion between both of the signs complained of and the logo.  

18.	In my judgment the approach the Recorder adopted cannot be faulted nor, in my judgment, can her conclusion.  She found, as I believe she was entitled to, that the use of the name “Griller” on the Hermit Road premises was such as to lead to a likelihood of confusion because the dominant element of the mark was the word “Griller” and it was being used in relation to identical services to those the subject of the registration. So also the manner of use of the sign “The Griller Original” was such as to lead to a likelihood of confusion, especially because the words "The" and "Original" were used in such an unobtrusive way that the word Griller was the dominant element of the sign, just as it was of the logo.  

19.	Mr Iqbal has developed the argument originally advanced by Mr Ikram and has emphasised in his skeleton argument and in his oral submissions that, in his submission, the Recorder fell into error in failing to consider that the logo comprised both the word “Griller” and the flame effects to which I have referred and as such was a device.  I accept that the logo is a device, but I cannot accept the submission that the Recorder failed to take this into account. As I have explained she carefully considered the nature of the logo and had well in mind that it consists not just of the word “Griller” but also of the flame effects. She also had regard to the fact that the word “Griller” is allusive to the services falling within the scope of the specification.  Nevertheless she concluded, as I believe she was entitled to, that the word Griller is the dominant component of the logo.  It is not descriptive of those services, as the Recorder found in the section of her judgment from paragraphs [34] to [36].  In those paragraphs she carefully considered the evidence deployed by all of the defendants to the effect that the word “Griller” was used as a descriptive term and she concluded that that evidence did not support that contention.  As she explained at paragraph [35], the evidence did not support the contention that the word “Griller” was used as a descriptive term whether in general or in the relevant trade and, further, she found that it had not been established that the word was used as a common term in the trade.  

20.	Mr Iqbal has also submitted that the Recorder was wrong to find that the signs complained of were likely to cause confusion because there are no flame effects in those signs.  Again I am unable to accept this submission because, as I have explained in the course of this judgment, it is clear that the Recorder had the nature of the signs complained of well in mind, including all of their components.  Nevertheless she found, as I believe she was entitled to, that there was a likelihood of similarity because both the signs and the logo comprised as a dominant component the word Griller.   

21.	For all of these reasons, I have reached the conclusion that, despite the persuasive submissions advanced by Mr Iqbal both in his skeleton argument and in his oral submissions, an appeal has no real prospect of success and accordingly this application must be dismissed.

Order: Application refused