Aigle misses the mark
Kerri Ann Ward examines what went awry.
O/139/19, American Airlines, Inc. v Aigle International S.A., UK IPO, 14th March 2019
- Do not dismiss what might appear to be non-distinctive elements, such as borders, or place undue reliance on a conceptual impression of a mark, when that impression is unlikely to be perceived universally
- Where possible, include evidence of the impact of marketing on consumers when claiming reputation
The Opponent (Aigle) is the proprietor of an EU and International trade mark registration for the mark, covering classes 9, 18 and 25. Aigle opposed UK Trade Mark Application No 3255476 by American Airlines, Inc. (AA) for a mark, covering class 25 on the basis of s5(2)(b), s5(3) and s5(4)(a) of the Trade Marks Act 1994 (the Act).
The Hearing Officer (HO) firstly assessed whether a likelihood of confusion existed under s5(2)(b), focusing on Aigle’s EU registration, which was not yet subject to use conditions. AA accepted that the goods were identical and it was held the average consumer was the general public with a reasonable level of attention. The visual impression of the marks was considered to be the most significant, due to the nature of sale and advertising of the class 25 goods, but any phonetic and conceptual impression could not be disregarded, as this would result in an incorrect artificial dissection of the marks. However, as neither mark has a verbal element, a phonetic comparison was not possible.
The key question for conceptual similarity was whether AA’s mark depicted an eagle or bird of prey and, if so, whether a “single meaning” rule applied. Aigle argued that the evidence showed AA had used an eagle in previous trade marks and if this were AA’s intention the Office should be reluctant to find that this had not been achieved. The HO disagreed and took the view that the mark lacked any clear concept. Any conceptual perception would not be universal. With reference to Soulcycle Inc. v Matalan Ltd  EWHC 496 (Ch), the HO concluded that the conceptual impression of a mark on an average consumer need not be binary. As such, it was concluded that the marks had no material conceptual similarity.
Visually, the marks were held to have a low degree of similarity, as the overall look and feel was considered to be quite different. In reaching this conclusion, the circular border and the stark two-dimensional impression of Aigle’s mark was contrasted with the three-dimensional impression of AA’s.
With the distinctive character of the earlier mark being deemed average, even with a slight uplift in relation to boots as a result of the evidence, it was held that the marks were not sufficiently similar for there to be a likelihood of confusion and the opposition failed under s5(2)(b).
In assessing s5(3) and s5(4)(a), it is worth noting that the HO considered that the impact of sales and marketing expenditure on how well known the mark had become had not been adequately proven. Nevertheless, the HO held that the evidence showed that some goodwill and reputation existed, although the reputation was not strong. Because of the low level of similarity, however, neither misrepresentation nor a “link” had been established by Aigle and the opposition also failed under s5(3) and s5(4)(a).
Kerri Ann Ward is a Trainee Trade Mark Attorney at Baker McKenzie LLP
Trainee Trade Mark Attorney, Baker McKenzie LLP