brand name, in spite of the addition of the word "apartments", is confusingly similar to Century City. The point
is well illustrated by the facts in Compass Publishing BV v Compass Logistics Ltd [2004] EWHC 520 (Ch). The
registered mark was the word "Compass" in relation, in simplified terms, to computer and computerrelated
services. The defendant traded in the same fields under the name Compass Logistics. After pointing out that
the two marks were not identical in the light of LTJ Diffusion SA v Sadas Vertbaudet SA (supra), the court
proceeded to consider whether they were confusingly similar. Laddie J said this (at paragraphs [24][25]):
"The likelihood of confusion must be appreciated globally, taking account of all relevant factors. It must be judged
through the eyes of the average
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consumer of the goods or services in question. That customer is to be taken to be reasonably well informed and
reasonably circumspect and observant, but he may have to rely upon an imperfect picture or recollection of the
marks. The court should factor in the recognition that the average consumer normally perceives a mark as a whole
and does not analyse its various details. The visual, aural and conceptual similarities of the marks must be assessed
by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant
components. Furthermore, if the association between the marks causes the public to wrongly believe that the
respective goods come from the same or economically linked undertakings, there is a likelihood of confusion.
Applying those considerations to the facts of this case, there can be little doubt that a likelihood of confusion exists
between the Defendant's use of the sign or mark 'COMPASS LOGISTICS' in relation to its
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business consultancy services and the notional use of the mark 'COMPASS' used in relation to business consultancy
services, including those in relation to which the Defendant specialises. The dominant part of the Defendant's mark is
the word 'compass'. For many customers, the word 'logistics' would add little of significance to it. It alludes to the type
of area of consultancy in which the services are carried out."
[14] This means that one has to assume reasonable notional use by a trade mark owner of the name Century City
for purposes of providing services for reserving and maintaining accommodation at apartments. The
appellant's use of Century City Apartments would to my mind have given rise to the likelihood of confusion. I,
therefore, conclude that the appellant's use of its brand name infringed the mentioned trade mark
registration. The same applies to the use of its domain name. This does not mean that the registration
remained unimpeachable. I shall revert to this issue.
[15] I do not agree with the High Court that this conclusion applies to the appellant's corporate name "Century
City Apartments Property Services CC". It is, in my view, materially different from the trade mark Century City.
I can do no better than to refer to the facts in 10 Royal Berkshire Polo Club Trade Mark [2001] RPC 643
especially at 653. The question was whether this mark was confusingly similar to the wellknown Polo mark.
The court held that it was not because it did not capture the distinctiveness of the trade mark owner's mark;
that the message of the mark came from the words in combination; and that the word Polo functioned
adjectivally in the context of the applicant's mark. Adjectival use may be distinctive from the use of a word as
a noun. The same considerations apply too in the present case to exclude the reasonable possibility of
confusion or deception.
[16] The next consideration is the question of infringement of the Association's device marks that contain the
words Century City. I have already disposed of the marks registered in class 41, leaving the registrations in
classes 35, 36 and 42. The Association's argument in this regard was fairly simple: since the device mark
contains the words Century City any use of the words Century City would infringe because they are, orally,
confusingly similar.
[17] The answer is not that straightforward. To determine the likelihood of confusion the matter must be
approached globally. Different types of trade marks are used differently, something recognised by the
definition of
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"use" in the Act (section 2(2)).1 A device is by definition a "visual representation or illustration capable of
being reproduced upon a
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surface" (section 2 "device"). The value (and distinctiveness) of such a mark depends heavily (and sometimes
exclusively) on its visual impact. In this respect it is not much different from marks that consist of a colour or
ornamentation or are containers. If these marks are combined with words or names their oral value may,
depending on the circumstances, come to the fore. The same applies if they can be referred to descriptively. It
may, therefore, be that the aural and/or conceptual dominant component of such a mark neutralises the
visual differences deriving from its graphic particularities (Cervecería Modelo, SA de CV v Office for Harmonisation
in the Internal Market (Trade Marks and Designs) (OHIM) 2005 WL 366940). Jeremy Phillips suggests in a
footnote that it depends very much on the nature of the goods or services (Trade Mark Law A Practical
Anatomy (2003) OUP at paragraphs 10.2910.33).
[18] The appellant's services are provided mainly through advertisements and internet sites. There is no evidence
of oral use of the device marks in relation to the services involved. The likelihood of confusion appears to me
in the circumstances of the case to be negligible and can be discounted. It follows from this that I am of the