Trade Mark Registry Ruling On Dilution And Confusion

The Trade Marks Registry has allowed an opposition by Direct Line Insurance Plc to an application by esure Insurance Limited to register a three-dimensional mark consisting of a computer mouse on wheels in respect of insurance and financial services in class 36, based upon an earlier two and three-dimensional images of a telephone on wheels, registered for identical services.

In a long and detailed judgment, the Hearing Officer undertook an extensive review of the principles involved in the assessment of confusion and similarity of marks under s.5(2) TMA 1994, and also of the requirements to prove dilution and unfair advantage under s.5(3). Key to the success of the opposition was the conceptual similarity of the two marks, comprising of "an unusual juxtaposition of a communication device with wheels".