trade marks act 1994 in the matter of application no ... · shoes, sandals, flip- flops, sports...

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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https://www.ipo.gov.uk/trademark/image/GB50120000003333771.jpg

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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trade marks act 1994 in the matter of application no ... · shoes, sandals, flip- flops, sports...

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