July 2007
Direct Line Escape Mouse Trap
Direct Line Insurance plc have successfully opposed esure International Ltd’s application to register a device mark using a computer mouse on wheels after a ruling in the High Court. The company pioneered the direct marketing of insurance products to the public back in the early 1990’s and undertook an aggressive advertising campaign featuring a red telephone on wheels to promote its brand before registering the device as a trade mark in the UK and Europe. In 1999 the former founder of Direct Line set up esure with the aim of providing insurance services for the next century using the internet. While the company started out using film director, Michael Winner, in its advertising, unsurprisingly it reverted back to a familiar formula this time using a computer mouse on wheels. esure applied to register their new device as a trade mark in 2004 but Direct Line successfully opposed the mark at the registry on the basis that it was a similar mark for identical goods and services, and that it would have a detrimental effect on their distinctive character. esure appealed disputing the similarity between the marks and stating that there can be no infringement without similarity.
Justice Lindsay again sided with Direct Line. While the marks may not have been similar enough to lead to a likelihood of confusion in the minds of consumers, it was held that esure’s use of a electronic communication device on wheels would take unfair advantage of Direct Line’s infamous telephone on wheels or have a detrimental effect on the similar mark. Justice Lindsay described the threshold test for similarity to be quite a low one and based on the visual, aural and conceptual similarities between two marks. In the present case the “conceptual similarity” was “black road wheels….added to [a] means of communication [that] give it the appearance of a vehicle”. Given the services were identical the court raised the question whether Direct Line could be confidant of spending money promoting their mark without also benefiting esure. The Hearing Office in the original case had described this link as “parasitic and unfair”. In upholding the Hearing Officer’s decision Justice Lindsay agreed with this analysis stating:
"[There] is no necessary inconsistency between, on the one hand, my holding …….that the public would not regard Direct Line and esure to be one and the same or economically related but rather would be more likely to see them as rivals and, on the other, my upholding the Hearing Officer's decision that were the mouse on wheels to be used as a mark there would, in the public's mind, be taken to be such a link between the two that use of the mouse would be parasitic and unfair."
Briffa’s Opinion
Direct Line were really helped in this case by the fact that they had registered their device in black and white which gave them the broadest possible protection. When analysing the similarity between the marks it did not matter that Direct Line generally used a red phone on wheels in their advertising and esure’s mouse was blue with a white t-shirt, because the analysis was based on what was on the registry – a means of communication on wheels registered for insurance services.
Both the Hearing Officer and Justice Lindsay were also not impressed with esure’s freeriding on the Direct Line brand. So it seems that esure will have to go back to Michael Winner.