19 September 2013

SBM, the owner of Casino de Monte-Carlo in Monaco (founded in 1863), brought a claim for trade mark infringement and passing off against AIL, a UK based company, who provided 'fun' casino entertainment (roulette and black-jack tables with no real bets) at weddings, corporate functions and charity events, under the trading name 'Monte Carlo Casino Entertainment'. AIL and its predecessors had been trading in the UK under this name since 1995. SBM relied on two word marks: 'Monte Carlo', registered in 2009, and 'Casino de Monte-Carlo', registered in 2010.

The case was heard in the Patents County Court (PCC) by Miss Recorder Amanda Michaels, who dismissed SBM's claim on both counts. The trade mark infringement case failed for the following reasons:

  • Although AIL's trading name was found to be moderately similar to SBM's marks, SBM could not establish a likelihood of confusion – there was no evidence of actual confusion after many years of trade, and the Recorder's view was that a consumer of AIL's services would exercise a high degree of attention when booking entertainment for an event, and it is unlikely that a transaction would be conducted without direct interaction between AIL and the client. Therefore the average consumer would not be confused (this was distinguished from goods purchased over the counter or internet, where the degree of attention exercised by the average consumer would be lower). The context of use of the AIL's trading name was particularly relevant in this case.
  • AIL's use of its trading name since 1995 (many years before SBM registered its marks) was honest and had not been without due cause. Therefore it was not competing unfairly with SBM.

It was also found that AIL could have relied on the 'own-name' defence, as it had been using its trading name in accordance with honest practices at all times.

The passing off claim failed principally because SBM could not establish goodwill in the UK. Recorder Michaels concluded that SBM's evidence went no further than to show reputation in the UK, without any 'supporting local business'. The case is therefore a reminder that goodwill and reputation are not the same thing, and a case in passing off will not get off the ground unless a claimant can show evidence of goodwill in the UK. Further, there was no evidence that instances of deception had occurred, or were likely to occur, after such a lengthy period of trading by both companies.

AIL counterclaimed for invalidity of SBM's word marks, but was unsuccessful. The arguments that (i) 'Monte Carlo' is a geographical name; and (ii) the 'Casino de Monte-Carlo' mark was purely descriptive, were not accepted on the facts.

The case does not establish new law, but is interesting from a procedural perspective, since it highlights the fact that the PCC is actively managing cases to ensure that they remain streamlined (and therefore can be dealt with in a short trial of 1-2 days). In this case, it was ordered at the Case Management Conference that Statements of Case should stand as evidence in chief, and permission was given for service of witness statements dealing with five specific issues only.

The case also considered to what extent the parties' pleadings need to identify the legal basis of its arguments (in addition to setting out the facts and arguments that the parties wish to rely on). Recorder Michaels found that where a party, especially an unrepresented party, had alleged facts which if proved would provide a good defence, but had relied on the wrong legal principle, it is in the interests of justice to give effect to that defence. It is questionable, though, whether a court would take the same view in relation to a legally represented party.

Case: Société Anonyme des Bains de Mer et du Cercle des Etrangers a Monaco v Anglofile International Limited trading as Monte Carlo Casino Entertainment [2013] EWPCC 38, 11 September 2013

The author Georgina Shaw is part of Burges Salmon's IP litigation team led by Jeremy Dickerson.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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