O-026-20
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3345537 BY WILL WILLIAMS MEDITATION LIMITED TO REGISTER THE FOLLOWING TRADE MARK
BE IN CLASSES 18, 25 AND 35
AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 415669 BY LAURA COLEMAN
AND
IN THE MATTER OF APPLICATION NO. 3359961 BY LAURA COLEMAN TO REGISTER THE FOLLOWING TRADE MARK
IN CLASSES 16, 25, 28 AND 41
AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 416208 BY WILL WILLIAMS MEDITATION LIMITED
Background and pleadings
1) Will Williams Meditation Limited (hereafter “Party A”) applied to register the trade
mark no. 3345537 for the mark BE on 15 October 2018. It was accepted and
published in the Trade Marks Journal on 4 January 2019. Following three
subsequent restrictions to the scope of its goods and services, the application
currently stands in respect of the following goods and services:
Class 18: Bags; cases; holdalls; sports bags; gym bags; kit bags; boot bags;
shoe bags; back packs; rucksacks; duffel bags; beach bags; school bags;
satchels; handbags; shoulder bags; tote bags; shopping bags; travel cases;
suitcases; garment bags for travel; toiletry bags; wash bags for carrying
toiletries; wallets; purses; coin purses; key cases; luggage label holders;
luggage tags; luggage straps; briefcases; attaché cases; luggage; umbrellas;
parasols; walking sticks.
Class 25: Clothing; footwear; headgear; articles of outer clothing; tops; shirts;
t-shirts; vests; blouses; knitwear; sweaters; pullovers; sweatshirts; jumpers;
jerseys; cardigans; tank tops; hooded tops; bottoms; trousers; pants; shorts;
jeans; denims; leggings; dresses; skirts; shoulder wraps; sashes and shawls;
jackets; coats; overcoats; raincoats; snow suits; waistcoats; suits; ties;
underwear; undergarments; hosiery; socks; tights; nightwear; sleepwear;
pyjamas; dressing gowns; bathrobes; belts; braces; wristbands; headbands;
scarves; gloves; mittens; ear muffs; leisurewear; casualwear; sportswear;
sweatpants; track suits; jogging suits; rainwear; waterproof clothing; anoraks;
parkas; gaiters; swimwear; bathing costumes; bathing caps; clothing, footwear
and headgear for children and babies; sleep suits; bibs, not of paper; aprons;
costumes; costumes for use in children's dress-up play; masquerade
costumes; Halloween costumes; boots; shoes; sandals; flip-flops; sports
shoes; sneakers; slippers; slipper socks; headwear; hats; caps; sun visors.
Class 35: Retail services, electronic shopping retail services, mail order retail
services all relating to bags, cases, holdalls, sports bags, gym bags, kit bags,
boot bags, shoe bags, back packs, rucksacks, duffel bags, beach bags,
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school bags, satchels, handbags, shoulder bags, tote bags, shopping bags,
travel cases, suitcases, garment bags for travel, toiletry bags, wash bags for
carrying toiletries, wallets, purses, coin purses, key cases, luggage label
holders, luggage tags, luggage straps, briefcases, attaché cases, luggage,
umbrellas, parasols, walking sticks, clothing, footwear, headgear, articles of
outer clothing, tops, shirts, t-shirts, vests, blouses, knitwear, sweaters,
pullovers, sweatshirts, jumpers, jerseys, cardigans, tank tops, hooded tops,
bottoms, trousers, pants, shorts, jeans, denims, leggings, dresses, skirts,
shoulder wraps, sashes and shawls, jackets, coats, overcoats, raincoats,
snow suits, waistcoats, suits, ties, underwear, undergarments, hosiery, socks,
tights, nightwear, sleepwear, pyjamas, dressing gowns, bathrobes, belts,
braces, wristbands, headbands, scarves, gloves, mittens, ear muffs,
leisurewear, casualwear, sportswear, sweatpants, track suits, jogging suits,
rainwear, waterproof clothing, anoraks, parkas, gaiters, swimwear, bathing
costumes, bathing caps, clothing, footwear and headgear for children and
babies, sleep suits, bibs, not of paper, aprons, costumes, costumes for use in
children's dress-up play, masquerade costumes, Halloween costumes, boots,
shoes, sandals, flip-flops, sports shoes, sneakers, slippers, slipper socks,
headwear, hats, caps, sun visors; none of the aforesaid services in the field of
occupational health, health monitoring, health assessment or for use in the
provision or arrangement of medical or health services.
2) Laura Coleman (hereafter “Party B”) opposes the application on the basis of
Section 5(2)(b) of the Trade Marks Act 1994 (“the Act”). This is on the basis of her
earlier UK registration no. 3333771, for a series of two marks. The relevant details of
this mark are:
Filing Date: 23 August 2018
Date of entry in register: 30 November 2018
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Class 41: Meditation training.
3) Party B asserts that the respective marks are visually similar and aurally and
conceptually identical. It is also asserted that the respective goods and services are
similar. It is submitted that, consequently, there exists a likelihood of confusion.
4) Party A filed a counterstatement denying the claims made.
5) Party B also applied to register the mark no. 3359961 on 11 December 2018. It
was accepted and published in the Trade Marks Journal on 1 February 2019. The
mark and the list of its goods and services are shown below:
Class 16: Printed matter; prints; art prints; photo prints; graphic prints;
posters; stationery; instructional and teaching materials.
Class 25: Articles of clothing; t-shirts; sweatshirts; jumpers; headgear; caps;
hats.
Class 28: Games, toys, playthings and novelties; snow globes; plush toys; toy
dogs.
Class 41: Education; training; teaching of meditation practices; meditation
training; information, consultancy and advisory services relating to all the
aforesaid services.
6) Party A opposes the application on the basis of Section 5(2)(b) of the Act. This is
on the basis of its 3345537 application (details of which are in paragraph 1, above).
It asserts that Party B’s mark should not be registered because it is similar to its
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mark and covers identical goods and services in classes 25 and 411 and in respect
of similar goods in classes 16 and 28. Consequently, there is a likelihood of
confusion.
7) Party B filed a counterstatement denying the claims made and pointing out that
she is also the proprietor of mark no. 3333771 BE (logo) in Class 41 with a filing date
that pre-dates the filing date of Party A’s application. It is also pointed out that Party
A has no registered right upon which it can rely upon.
8) The two oppositions were subsequently consolidated. Only Party B filed evidence.
This will be summarised to the extent that it is considered necessary. The parties
both filed written submissions in lieu of a hearing. In reaching my decision, I have
considered all the papers careful.
Evidence
9) This takes the form of the witness statement of Party B (who gives her full name
Laura Margaret Mary Coleman) together with exhibits LMMC1 to LMMC16. Party B
states that she is a meditation coach who set up her practice in the UK in 20182.
Details of Party B’s trading activities are provided, but it is not necessary that I detail
them here other than to record that between August 2018 and the time of her
witness statement (undated but received on the 2 August 2019) the turnover under
the mark amounted to £6,4413.
10) Party B sets out a chain of events that involves Party A making an approach to
purchase her mark and filing its marks in the knowledge of her activities4. These
statements are noted but have no bearing on my considerations in the proceedings
before me that are limited to grounds based upon section 5(2)(b) of the Act where
my deliberations are in respect solely to establishing if there is a likelihood of
confusion based upon the information contained in the respective
1 As I mentioned in para 1, Class 41 was subsequently removed from Party A’s application 2 Ms Coleman’s witness statement, para 2 3 Ditto, paras 6 - 8 4 Ditto, paras 9 - 23
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registrations/applications. My considerations do not take into account actual
marketing strategies or behaviours of the parties5.
11) Party B alleges that Party A’s restriction of its list of goods and services to
classes 18, 25 and 35 is an attempt to circumvent Party A’s trade mark rights6.
Again, this is noted, but the motivation behind Party A’s actions do not form part of
the global appreciation test required by the jurisprudence relating to section 5(2)(b)
of the Act.
12) Party B states that “several parties offer training services, clothing and bags”7.
Extracts from websites are provided showing three examples8:
• A thermal spa named “Ragdale Hall” providing exercise classes and also
offering a t-shirt and a shopping bag both bearing the name “Ragdale Hall”;
• “Pineapple” offering both “yoga/pilates” as well as “Dance” or “Dancer” bags
and tote bags as well as women’s tops, some of which are shown bearing the
“Pineapple” brand, and;
• “Gym Box” operating three gyms in London offering a meditation class and
also a t-shirt bearing the gym’s branding.
DECISION
Approach
13) The outcome of Party B’s opposition to Party A’s 3345537 application has the
potential to also decide Party A’s opposition to her 3359961 application because
Party A relies upon its 3345537 application as its earlier mark. If, as a result of Party
B’s opposition, Party A’s mark is refused it will have no earlier mark to rely upon for
the purposes of its opposition. Consequently, I will begin by considering Party B’s
opposition.
5 At para 59 of the CJEU’s judgment in Devinlec Développement Innovation Leclerc SA v OHIM, Case C-171/06P, it stated that marketing considerations are not relevant when considering the likelihood of confusion 6 Ms Coleman’s witness statement, para 23 7 Ditto 8 At Exhibit LMMC16
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Party B’s Opposition
14) Section 5(2)(b) of the Act is as follows:
“5(2) A trade mark shall not be registered if because-
(b) it is similar to an earlier trade mark and is to be registered for goods or
services identical with or similar to those for which the earlier trade mark is
protected, there exists a likelihood of confusion on the part of the public,
which includes the likelihood of association with the earlier trade mark”.
15) Section 5A of the Act is as follows:
“5A Where grounds for refusal of an application for registration of a trade
mark exist in respect of only some of the goods or services in respect of which
the trade mark is applied for, the application is to be refused in relation to
those goods and services only.”
Comparison of goods and services
16) Section 60A of the Act provides:
“(1) For the purpose of this Act goods and services-
(a) are not to be regarded as being similar to each other on the ground
that they appear in the same class under the Nice Classification.
(b) are not to be regarded as being dissimilar from each other on the
ground that they appear in different classes under the Nice
Classification.
(2) In subsection (1), the ”Nice Classification” means the system of
classification under the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration
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of Marks of 15 June 1957, which was last amended on 28 September 1975.”
17) In the judgment of the Court of Justice of the European Union (“the CJEU”) in
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97, the court
stated at paragraph 23 of its judgment that:
“In assessing the similarity of the goods or services concerned, as the French
and United Kingdom Governments and the Commission have pointed out, all
the relevant factors relating to those goods or services themselves should be
taken into account. Those factors include, inter alia, their nature, their
intended purpose and their method of use and whether they are in
competition with each other or are complementary”.
18) The relevant factors identified by Jacob J. (as he then was) in the Treat case,
[1996] R.P.C. 281, for assessing similarity were:
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods or services reach
the market;
(e) In the case of self-serve consumer items, where in practice they are
respectively found or likely to be, found in supermarkets and in particular
whether they are, or are likely to be, found on the same or different shelves;
(f) The extent to which the respective goods or services are competitive. This
inquiry may take into account how those in trade classify goods, for instance
whether market research companies, who of course act for industry, put the
goods or services in the same or different sectors.
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19) In Kurt Hesse v OHIM, Case C-50/15 P, the CJEU stated that complementarity is
an autonomous criterion capable of being the sole basis for the existence of
similarity between goods. In Boston Scientific Ltd v Office for Harmonization in the
Internal Market (Trade Marks and Designs) (OHIM), Case T-325/06, the General
Court stated that “complementary” means:
“...there is a close connection between them, in the sense that one is
indispensable or important for the use of the other in such a way that
customers may think that the responsibility for those goods lies with the same
undertaking”.
20) In Sanco SA v OHIM, Case T-249/11, the General Court indicated that goods
and services may be regarded as ‘complementary’ and therefore similar to a degree
in circumstances where the nature and purpose of the respective goods and services
are very different, i.e. chicken against transport services for chickens. The purpose
of examining whether there is a complementary relationship between goods/services
is to assess whether the relevant public are liable to believe that responsibility for the
goods/services lies with the same undertaking or with economically connected
undertakings. As Mr Daniel Alexander Q.C. noted as the Appointed Person in
Sandra Amalia Mary Elliot v LRC Holdings Limited BL-0-255-13:
“It may well be the case that wine glasses are almost always used with wine –
and are, on any normal view, complementary in that sense - but it does not
follow that wine and glassware are similar goods for trade mark purposes.”
21) Whilst on the other hand:
“.......it is neither necessary nor sufficient for a finding of similarity that the
goods in question must be used together or that they are sold together.
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Class 18
22) Party B’s earlier mark is registered in respect of meditation services. Party A’s
can be collectively described as various types of bags, cases and accessories as
well as wallets, purses, parasols, umbrellas and walking sticks. When compared to
Party B’s services, they are all self-evidently different in nature, purpose and method
of use. Services are manifestly different in nature to goods, the purpose of bags is to
carry items whereas meditation services provide an environment to practice
meditation, possibly under supervision. The respective goods and services are
clearly not in competition with each other. In respect of whether the respective goods
and services are complementary in the sense discussed in the jurisprudence
referred to paragraphs 19 to 21, above, Party A’s goods are certainly not
indispensable or important for the use of Party B’s services”.
23) There is some limited evidence that providers of meditation classes and gym
classes also provide bags. This appears to be intended to show that the public might
believe that the responsibility for bags might lie with the same undertaking that
provides meditation services under the same mark, or with an economically
connected undertaking. The difficulty with this submission is that it is not based on
the inherent characteristics of bags and meditation services, or the usual marketing
conditions for such goods/services. Instead it depends on the goods being those of a
meditation services provider, which is not a clear or precise sub-category of bags. I
find that there is no complementarity between these goods and services, nor is it
common for them to be provided from the same or economically linked providers.
24) Taking all of this together, I conclude that Party A’s goods share no similarity to
Party B’s meditation services.
Class 25
25) Party A’s list of goods includes all types of clothing, footwear and headgear. My
considerations here are very similar to those considered when comparing Party B’s
services to Party A’s Class 18 goods. There is no objective similarity between these
goods and meditation services. In written submissions, Party B denies Party A’s
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submissions that the respective goods and services are not complementary and
draws attention to her evidence filed in support of the contention that there is overlap
between these and where three examples of providers of meditation/yoga/pilates
classes also providing clothing and bags. This approach would mean that the same
goods and/or services might be regarded as being similar or dissimilar, depending
on the reputation of the earlier mark. Taken to its logical conclusion it would also
mean that any potential merchandise could be regarded as similar to meditation
services, notwithstanding the absence of any objective similarity between the goods
and services. Adopting such an ‘elastic’ approach to similarity of goods/services
would undermine the requirement in section 5(2) of the Act for the respective
goods/services to be objectively similar, at least to some extent. It would also make it
unduly difficult for other operators in the market sectors concerned to assess
whether a particular mark is free for use in relation to particular goods/services. I
therefore reject the approach proposed by Party B.
26) Users of meditation services will wear clothing and such goods are included in
Party A’s specification but this is not sufficient to justify a conclusion that the
respective goods/services are similar. I keep in mind that the courts have rejected
similar attempts to broaden the protection afforded to marks under provisions of law
equivalent to section 5(2) of the Act when it comes to marks claiming to have a
particular kind of reputation with the public. For example, in Compagnie des montres
Longines, Francillon SA v OHIM, Case T-505/12, paras 54 and 55, the General
Court (“the GC”) rejected the argument that sunglasses, jewellery and watches were
similar to clothing on the basis that they were all types of luxury goods and the
earlier mark had a reputation as a luxury brand. Similarly, in the current case,
clothing and meditation services are not similar just because clothing may be sold by
certain meditation service providers.
27) In conclusion, I find that the respective goods and services have different
natures, purposes, methods of use and do not share trade channels. They are not in
competition nor are they complementary. I conclude that they do not share any
similarity.
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Class 35
28) Party A’s services are all various retail services relating to the goods subject of
its Class 18 and 25 specifications. The respective specifications both cover services,
but this alone is insufficient establish any similarity when considering their:
• Nature: one is a retail service being the creation of an environment to present
goods for the purpose of selling them to the public; the other are services or
meditation in Class 41. Whilst the term is quite broad, being in Class 41 it will
naturally be considered as relating to the provision of education, training or
entertainment. Such meditation services are different in nature to retail
services.
• Intended purpose: One service is to encourage the sale of goods, the other is
to assist others in taking part in meditation. Their purpose is different.
• Method of use: this is manifestly different.
• Trade channels: It is not usual for retail services and meditation services to be
co-provided and do not share trade channels.
29) In addition, the respective services are not in competition with each other and
neither are they complementary in the sense described in Boston Scientific.
30) In conclusion, I find that these services are not similar.
31) It is a mandatory requirement of this provision that there is similarity between the
respective goods/services (See Waterford Wedgwood plc v OHIM – C-398/07 P
(CJEU) and eSure Insurance v Direct Line Insurance, [2008] ETMR 77 CA, para 49.)
In light of this, it follows from the above findings that the opposition under section
5(2)(b) of the Act fails.
32) As a consequence of this finding, Party A’s application can proceed to
registration and, upon becoming registered will be a valid earlier mark that can be
relied upon in its opposition to Party B’s mark. Therefore, I go on to consider the
merits of Party A’s opposition.
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Party A’s opposition
Comparison of goods and services
33) In its written submissions, Party A informed the Registry that it no longer wished
to pursue its opposition against Party B’s Class 16 and 28 goods or its Class 41
services. Therefore, Party A’s opposition remains only in respect of Party B’s Class
25 goods.
34) Party B’s Class 25 specification reads: Articles of clothing; t-shirts; sweatshirts;
jumpers; headgear; caps; hats. These goods are all included in the broad terms
clothing and headgear present in Party A’s specification. Consequently, the
respective terms include identical goods.
Comparison of marks
35) It is clear from Sabel BV v. Puma AG (particularly paragraph 23) that the
average consumer normally perceives a mark as a whole and does not proceed to
analyse its various details. The same case also explains that 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. The Court of Justice of the European Union stated at paragraph 34 of
its judgment in Case C-591/12P, Bimbo SA v OHIM, that:
“.....it is necessary to ascertain, in each individual case, the overall impression
made on the target public by the sign for which registration is sought, by
means of, inter alia, an analysis of the components of a sign and of their
relative weight in the perception of the target public, and then, in the light of
that overall impression and all factors relevant to the circumstances of the
case, to assess the likelihood of confusion.”
36) It would be wrong, therefore, to artificially dissect the trade marks, although, it is
necessary to take into account the distinctive and dominant components of the
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Party A’s mark Party B’s mark
BE
marks and to give due weight to any other features which are not negligible and
therefore contribute to the overall impressions created by the marks.
37) The respective marks are shown below:
38) Party A’s mark consists simply of the two-letter word “BE” and is self-evidently
the dominant and distictve element. Part B’s mark consists of the word “Be” in
addition to a yellow-coloured full-stop positioned directly after the letter “e”. Further,
the words “MEDITATION COACHING COURSES AND COMMUNITY” appear over
two lines in small letters and positioned directly under the “BE” and full-stop
elements. These words are likely to be perceived as a statement about services
rather than indicating a trade origin and, consequently, will not contribute to the
distinctive character of the mark. The full-stop also plays a relatively small
contribution to the mark’s distinctive character but is less likely to go unnoticed
because of its contrasting colour. Whilst I do not disregard it, it is not likely to
contribute to the distinctive character of the mark in anything other than a minimal
way. The word “Be” is the dominant and distinctive element.
39) Visually, the marks are similar because they both share the element “Be”/“BE”.
The additional elements present in Party B’s mark are absent from Party A’s mark and
are points of difference but as I observed above, the “Be” element is the dominant and
distinctive part of the mark. This is especially so when considered from a visual
perspective. Taking account of this, I find that the respective marks share a medium
to medium high level of visual similarity.
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40) Aurally, Party B’s mark is likely to be pronounced merely as “bee”, the same as
Party A’s mark. The additional elements present in Party B’s mark are not likely to be
referred to. I conclude that they are aurally identical.
41) Conceptually, the word “be” has a number of meanings. However, it is likely that
the average consumer will perceive the same meaning of the word in both marks.
Therefore, because of the common occurrence of the word in both marks, it creates
some conceptual similarity. The additional elements present in Party B’s mark
introduces additional conceptual elements that are not present in Party A’s mark.
Taking all of this together, I find that the respective marks share a medium level of
conceptual similarity.
Average consumer and the purchasing act
42) The average consumer is deemed to be reasonably well informed and
reasonably observant and circumspect. For the purpose of assessing the likelihood
of confusion, it must be borne in mind that the average consumer's level of attention
is likely to vary according to the category of goods or services in question: Lloyd
Schuhfabrik Meyer, Case C-342/97.
43) In Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc, Poeticgem
Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox Limited, [2014]
EWHC 439 (Ch), Birss J. described the average consumer in these terms:
“60. The trade mark questions have to be approached from the point of view
of the presumed expectations of the average consumer who is reasonably
well informed and reasonably circumspect. The parties were agreed that the
relevant person is a legal construct and that the test is to be applied
objectively by the court from the point of view of that constructed person. The
words “average” denotes that the person is typical. The term “average” does
not denote some form of numerical mean, mode or median.”
44) The average consumer of clothing and headgear will be ordinary members of the
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public. The purchase is normally made from high street or Internet retailers. In
respect of the nature of the purchasing act for these goods, I am mindful of the
comments of Mr Simon Thorley, sitting as the Appointed Person, in React trade mark
[2000] R.P.C. 285:
“There is no evidence to support Ms Clark’s submission that, in the absence
of any particular reputation, consumers select clothes by eye rather than by
placing orders by word of mouth. Nevertheless, my own experience tells me it
is true of most casual shopping. I have not overlooked the fact that catalogues
and telephone orders play a significant role in this trade, but in my experience
the initial selection of goods is still made by eye and subsequent order usually
placed primarily by reference to a catalogue number. I am therefore prepared
to accept that a majority of the public rely primarily on visual means to identify
the trade origin of clothing, although I would not go so far as to say that aural
means of identification are not relied upon.”
45) The GC has continued to identify the importance of visual comparison when
considering the purchasing act in respect of clothing (see for example Joined Cases
T-117/03 to T-119/03 and T-171/03 New Look Ltd v OHIM (NLSPORT et al) [2004]
ECR II-3471 at [49]-[50] and Case T-414/05 NHL Enterprises BV v OHIM (LA
KINGS) [2009] ECR II.). Since these judgments there has been an increasing
prevalence of the purchase of clothing to be done online, however, this is also a
visual method of selection. There is nothing before me in the current proceedings to
lead me to conclude differently and, consequently, taking into account the above
comments, I conclude that the purchasing act will generally be a visual one.
However, I do not ignore the aural considerations that may be involved. The
purchase of clothing and headgear is, if not quite an everyday purchase, certainly a
regular purchase for most consumers. Whilst these goods vary in cost, they are not
normally very expensive. Taking account of this, the level of attention paid by the
consumer is medium rather than high.
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Distinctive character of the earlier trade mark
46) In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97
the CJEU stated that:
“22. In determining the distinctive character of a mark and, accordingly, in
assessing whether it is highly distinctive, the national court must make an
overall assessment of the greater or lesser capacity of the mark to identify the
goods or services for which it has been registered as coming from a particular
undertaking, and thus to distinguish those goods or services from those of
other undertakings (see, to that effect, judgment of 4 May 1999 in Joined
Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and
Attenberger [1999] ECR I-0000, paragraph 49).
23. In making that assessment, account should be taken, in particular, of the
inherent characteristics of the mark, including the fact that it does or does not
contain an element descriptive of the goods or services for which it has been
registered; the market share held by the mark; how intensive, geographically
widespread and long-standing use of the mark has been; the amount invested
by the undertaking in promoting the mark; the proportion of the relevant
section of the public which, because of the mark, identifies the goods or
services as originating from a particular undertaking; and statements from
chambers of commerce and industry or other trade and professional
associations (see Windsurfing Chiemsee, paragraph 51).”
47) Trade marks possess varying degrees of inherent distinctive character, ranging
from the very low, because they are suggestive or allusive of a characteristic of the
goods or services, to those with high inherent distinctive character, such as invented
words which have no allusive qualities. As Party A has not filed any evidence to
show that its mark has enhanced its distinctiveness through use, I have only the
inherent position to consider.
48) Party A’s mark consists of the word “Be” being a readily known English word. It is
not an invented word and it is, therefore, not endowed with the highest level of
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distinctive character. Rather, it is a common dictionary word, albeit unconnected to
the goods and services. I find that the mark has an average degree of inherent
distinctive character.
GLOBAL ASSESSMENT – Conclusions on Likelihood of Confusion.
49) The following principles are gleaned from the decisions of the CJEU in Sabel BV
v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc,
Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-
342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98,
Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson
Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato &
C. Sas v OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P:
(a) The likelihood of confusion must be appreciated globally, taking account of
all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of
the goods or services in question, who is deemed to be reasonably well
informed and reasonably circumspect and observant, but who rarely has the
chance to make direct comparisons between marks and must instead rely
upon the imperfect picture of them he has kept in his mind, and whose
attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not
proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be
assessed by reference to the overall impressions created by the marks
bearing in mind their distinctive and dominant components, but it is only when
all other components of a complex mark are negligible that it is permissible to
make the comparison solely on the basis of the dominant elements;
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(e) nevertheless, the overall impression conveyed to the public by a
composite trade mark may be dominated by one or more of its components;
(f) however, it is also possible that in a particular case an element
corresponding to an earlier trade mark may retain an independent distinctive
role in a composite mark, without necessarily constituting a dominant element
of that mark;
(g) a lesser degree of similarity between the goods or services may be offset
by a great degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a
highly distinctive character, either per se or because of the use that has been
made of it;
(i) mere association, in the strict sense that the later mark brings the earlier
mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood
of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks creates a risk that the public might
believe that the respective goods or services come from the same or
economically-linked undertakings, there is a likelihood of confusion.
50) There is no scientific formula to apply in determining whether there is a likelihood
of confusion; rather, it is a global assessment where a number of factors need to be
borne in mind. The first is the interdependency principle, i.e. a lesser degree of
similarity between the respective trade marks may be offset by a greater degree of
similarity between the respective goods and services and vice versa. It is necessary
for me to keep in mind the distinctive character of the earlier trade mark, the average
consumer for the goods and services and the nature of the purchasing process. In
doing so, I must be alive to the fact that the average consumer rarely has the
opportunity to make direct comparisons between trade marks and must instead rely
upon the imperfect picture of them he has retained in his mind.
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51) Confusion can be direct or indirect. Direct confusion involves the average
consumer mistaking one mark for the other, while indirect confusion is where the
average consumer realises the marks are not the same but puts the similarity that
exists between the marks and the goods and services down to the responsible
undertakings being the same or related.
52) The respective goods are identical. Party A’s mark consists of the word “BE” and
the same word, presented as “Be”, is the dominant and distinctive element of Party
B’s mark. I found that the respective marks share a medium to medium high level of
visual similarity, a medium level of conceptual similarity and are aurally identical.
When factoring in the reasonable level of care and attention paid during the
purchasing act and the importance of visual comparison in respect of the goods
concerned, I conclude that the average consumer is likely to confuse one mark for
the other leading to direct confusion. However, even if I am wrong, and the average
consumer is alert to the visual differences between the marks, there is an equal
likelihood that it will be assumed that the goods sold under the respective marks
originate from the same or linked undertaking and that the differences between the
marks are the result of one trader using two variations of its mark.
Summary
53) In conclusion:
• Party B’s opposition to Party A’s 3345537 application fails in its entirety, and;
• Party A’s opposition is provisionally successful against Party B’s Class 25
specification. I say “provisional” because as of this time, the mark upon which
it relies upon is not registered and, therefore, does not qualify as an earlier
mark under section 6(1)(a) of the Act. The reason it is not currently registered
is Party B’s failed opposition that, following my decision, may still be subject to
appeal. Consequently, my decision regarding Party A’s opposition is
provisional and will become applicable if, or when, it proceeds to registration.
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COSTS
54) Conditional upon Party A’s mark proceeding to registration, it will be entitled to
an award of costs because it will have been successful in respect of both
oppositions. The award is a contribution towards its costs of the two consolidated
proceedings and will be calculated as follows:
Preparing statement, considering other side’s statements and preparing
counterstatement £400
Official fee for the Form TM7 in opposition 416208 £100
Considering other side’s evidence £200
Preparing submissions in lieu of a hearing £300
Total £1000
55) The appeal period in respect of opposition 415669 starts from the date of this
decision.
56) Party A is directed to inform the Registry of the date of entry on the register of its
3345537 mark, or of the consequences other than registration that may arise from
any appeal by Party B in opposition 415669. I will then issue a supplement to this
decision setting out the appeal period in respect of opposition 416208 and the period
in which the costs award must be paid.
Dated this 15th day of January 2020
Mark BryantFor the RegistrarThe Comptroller-General
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