App owner chases its tail
Dale Carter has a bone to pick with the HO here. O/372/19, DOGAPP (Opposition), UK IPO, 3rd July 2019
O/372/19, DOGAPP (Opposition), UK IPO, 3rd July 2019
The Applicant in this case, DogApp Ltd, offers a mobile app for dog owners and applied for the figurative mark in respect of classes 9, 35 and 38. None of the Applicant’s goods or services were specified as relating to dogs.
The Opponent, DogBook App Ltd, offers a comparable social media app for dog owners named “The Dog App”. The Opponent opposed the Application under s5(2)(b) of the Trade Marks Act 1994, relying on the figurative mark. The Opponent’s registration was not subject to proof of use and its specification included goods and services limited to the field of pets as well as broader terms with no limitation as to their field of use.
Applying Meric, the Hearing Officer (HO) found the goods and services to be identical. The average consumer was the general public, whose level of attention would be average, or slightly higher than average if the app is offered by paid subscription. The act of purchasing an app was primarily a visual one, although it was not discounted that an app could be recommended by word of mouth.
HO assessment
The distinctive character of each mark was assessed on the basis that the interests of the parties lie in dog-related apps. It was held that the words DOG APP and THE DOG APP are non-distinctive and descriptive in this context. The figurative components of each mark formed their dominant and distinctive elements. The marks were found to be visually similar to a low degree, aurally identical and conceptually similar to a high degree.
Due to that analysis of the verbal elements, the dissimilar figurative elements and the visual nature of the purchasing act, the HO found no likelihood of direct confusion. Indirect confusion was also ruled out, any association arising because of the coincidental use of descriptive language.
Conclusion considered
Overall, the HO appears to have arrived at the right conclusion, but I wonder if a slightly different outcome should have been reached in relation to goods/services unrelated to dogs.
Led by the Applicant’s evidence, the HO focused on the contested goods aimed at dog owners offered via an app. In doing so the HO did not consider notional and fair use of either mark across the full breadth of the specification. The HO accepted that the Opponent’s mark is more distinctive for goods and services that are not dog-related, where the verbal and visual elements played a more or less equal role in the overall impression. Notwithstanding that the Applicant’s mark “may cross over the line in terms of likelihood of confusion” in relation to non-dog-related goods and services, and despite there being identical goods and services in play, the HO did not consider whether a likelihood of confusion existed for the broader categories.
It could be argued that the opposition should have succeeded against the non-dog-related goods and services covered by both specifications and for which the coinciding words DOG APP hold some degree of distinctiveness.
Key points
- Marks containing non-distinctive verbal elements that do not dominate their overall impression have a narrow penumbra of protection
- The mark of an opposing party that is not subject to proof of use should be assessed based on notional and fair use across the full breadth of the opposing party’s specification
Dale Carter is a Chartered Trade Mark Attorney and Senior Associate in Reddie & Grose LLP’s trade mark team
Author
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Dale Carter
Trade Mark Attorney, Reddie & Grose LLP