International Businesss Machines Corporation & Anor v Web-Sphere Ltd & Ors

Mr. Iain Purvis (instructed by Addleshaw Goddard) for the Claimant Mr. Richard de Serville in person for the First & Second Defendant Mr. David Markson in person as Third Defendant Hearing dates : 8th & 9th March 2004 ____________________

i) There is a tension between para 50, which requires a strict interpretation of identity and para 52 which requires the court to allow for the imperfect picture of the average consumer. Although, as Jacob LJ said, the latter is a concept more aptly related to the question whether there is a likelihood of confusion, it is clear, in my judgment, that the ECJ held that same concept applies to the absolute protection given by Article 9 (a).

ii) An addition in the sign (as compared with the mark) may take the case outside one of "identity". However, the addition (or difference) may be so minute as to leave the sign and the mark identical.

iii) As a matter of policy there is no reason to suppose that the ECJ meant to soften the edges of "identity" very far; because, even where a mark and a sign are not identical, the proprietor of the mark will be protected if there is likelihood of confusion.

ii) The mark consists "exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or the rendering of the service, or other characteristics of the goods or service" Article 7 (1)(c); and