Appeal has no power
Chris Thomas recounts the reasoning behind the judge’s support of the HO.  EWHC 849 (Ch), Manpower Direct (UK) Ltd v Manpower Group Inc, High Court, 11th April 2019.
 EWHC 849 (Ch), Manpower Direct (UK) Ltd v Manpower Group Inc, High Court, 11th April 2019
In a judgment handed down on 11th April 2019, Mr Justice Birss ruled on an appeal from a decision (Decision) of the UK Trade Mark Registry (Registrar) brought by the Appellant, Manpower Direct (UK) Ltd (MDUK). Manpower Group Inc (MPI) was the Respondent to the appeal.
The judgment considers the principles applicable in cases involving grounds of opposition under s5(3) of the Trade Marks Act 1994 (TMA), which states: “a trade mark which is identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a European Union trade mark or international trade mark (EC), in the European Union) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”.
MDUK provides security services in the UK and has done so since 2003. In 2016, MDUK applied to register five word and device marks (the MDUK Marks) featuring the word MANPOWER in classes 45 (for a range of security services) and 37 (installation of CCTV). The Opponent was MPI, a large-scale provider of temporary and permanent employment placements and recruitment services, which has operated in the UK since 1956. MPI opposed registration of the MDUK Marks based on a prior UK registration on 8th September 1995 for the word MANPOWER in class 35 (recruitment and provision of staff) (the MPI Trade Mark).
MPI based its opposition on s5(3) TMA and claimed that registration of the MDUK Marks would take unfair advantage of the reputation in the MPI Trade Mark. Ms Skilton, the Hearing Officer (HO) upheld the opposition and refused registration of the MDUK Marks.
MDUK advanced three grounds of appeal, which were considered by Birss J:
- the HO had wrongly focused on the services offered by MDUK and not the full scope of the services applied for;
- the HO failed to address the issue of due cause under s5(3);
- the HO was wrong to find that MDUK’s evidence was not sufficient to establish honest concurrent use.
Judgment in summary
The appeal was dismissed. On ground one, Birss J was satisfied the HO had considered the services applied for and not just those in use by MDUK. The HO did not have to separately set out the issue of due cause when considering the s5(3) opposition. The HO made a finding of fact in relation to ground three that evidence of honest concurrent use fell “a long way short” of the required standard.
The HO’s decision was reviewed in detail by Birss J, who believed the HO had applied the correct test, which was “to determine which services MPI’s reputation was based on and in the light of those findings to determine whether the use of MDUK’s marks across the full range of services contained within its specifications would cause confusion, damage or take advantage”.
He also found that:
- It was open to the HO to find that MPI had established a strong reputation in the UK in relation to the recruitment and provision of staff under the word MANPOWER and that none of the distinguishing characteristics of the MDUK Marks altered the use of this brand message.
- The HO correctly applied Intel, requiring that a link must be established between the marks in the minds of the public. The factors to take into account include: the degree of similarity between the conflicting marks; the nature of the goods or services for which the conflicting marks were registered; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of the likelihood of confusion on the part of the public.
- It was open for the HO to find that the MDUK Marks and the MPI Trade Mark were similar and that the dominant element of the MDUK Marks was the word MANPOWER.
- The HO was entitled to find that the level of reputation in the MPI Trade Mark was such that it was highly distinctive of MPI’s services even though the word MANPOWER was descriptive.
- The HO did not need to establish that the services covered by the MDUK Marks and MPI Trade Mark were similar/identical where as a consequence of the highly distinctive character and reputation of the TMI Trade Mark, customers would still make a link between the two.
- The HO correctly considered the test for establishing detriment/unfair advantage as set out in Aktieselskabet af 21. november 2001 v OHIM, Case C-197/07P: an applicant does not have to establish actual injury but a risk of a link that is not merely hypothetical.
- While the MANPOWER word mark was descriptive, it was held to have acquired distinctiveness through reputation to create a link in the minds of the public even where MDUK was providing different services
- It is the full range of services for which an applicant seeks registration of a mark and not just the services provided under the mark that should be considered when determining whether there is likely to be a detriment/unfair advantage
- Competing marks do not have to be registered for identical/similar services to establish a detriment/unfair advantage provided there is a link
Chris Thomas is a Solicitor at Appleyard Lees LLP