Lo or no
David Birchall considers the difficulties in opposing a mark where the shared element is non-distinctive. O/696/19, NO DOUGH PIZZA CO (Opposition), UK IPO, 15th November 2019
Lo-Dough Ltd (the Opponent) successfully registered LO-DOUGH and LO DOUGH as a series of UK trade marks in 2016 in respect of, inter alia, foodstuffs falling into class 30, including pizza.
In February 2018, Scratch Meals Ltd applied to register a stylised trade mark in respect of various foodstuffs in classes 29 and 30, including pizza.
The Opponent opposed the entire application on the basis of its earlier marks under s5(2)(b) of the Trade Marks Act 1994 and also under s5(4)(a) on the basis of unregistered rights in the same marks.
The Opponent argued that the goods applied for were identical or similar to those for which its earlier marks were protected. It also argued that, since PIZZA CO was purely descriptive of the goods applied for, the dominant and distinctive elements of the opposed mark were the words NO DOUGH, thus creating a likelihood of confusion.
Similarity
All the class 29 goods applied for, other than “game, fish, seafood; eggs; preparations for making soups; dairy products”, were found to be at least similar to the goods for which the earlier marks were protected.
Where the class 30 goods applied for were not found to be identical to the goods protected under the earlier marks, they were found to be at least similar.
The Hearing Officer (HO) found that for pizza goods, the word PIZZA and the “pizza slice” device in the centre of the opposed mark were non-distinctive but that for non-pizza goods they were distinctive.
Overall, visually, the marks were found to have an above low, but not medium, similarity. Aurally, the marks were found to have low similarity. Conceptually, the marks were found to be similar.
For the goods for which dough is not an ingredient, the earlier marks were held to be neither allusive/suggestive of the goods themselves nor descriptive and to have an above low, but not as high as medium, degree of inherent distinctive character. For goods which may contain dough, it was held that the distinctive character of the earlier marks was very low. The HO referred to case law which held that where the only similarity between the marks is a common element with low distinctiveness, that points against a likelihood of confusion.
The HO dismissed evidence filed by the Opponent to show an instance of actual confusion in relation to pizza products following the position taken in previous cases: that traders choosing marks which have low or no distinctiveness for the goods in question must tolerate use by third parties which they believe to be confusing.
Although noting that LO and NO sound and look alike and that both precede DOUGH, the HO held that there was no likelihood of confusion, either directly or indirectly, even in respect of goods found to be identical.
While the Opponent claimed to have sold foodstuffs under its marks since December 2015, it was held that there was little evidence of sales before the application date of the opposed mark and no evidence of amounts spent on advertising/marketing. The opposition failed under s5(4) too.
Key points
- If the only similarity between marks is a common element with low distinctiveness, that points to there not being a likelihood of confusion
- The courts have frequently stated that traders choosing marks that have no or low distinctiveness for the goods in question must tolerate use by third parties