Case clothed

23rd Apr 2019

A common word component favoured the Opponent, says Donna Trysburg. O/026/19, ITS AN ADDICTION (Opposition), UK IPO, 15th January 2019.

O/026/19, ITS AN ADDICTION (Opposition), UK IPO, 15th January 2019

Key points

• Adding extra elements to a trade mark will not avoid a likelihood of confusion where the additional matter plays a weak role, is smaller in size and has less visual impact than the element that the marks have in common
• The purchase of clothing is primarily a visual process, and so the visual comparison between marks is critical in this context and is afforded more weight
• Coexistence of trade marks on the register is not in itself sufficient to establish that an element in common has a weakened distinctive character

In this decision, the Hearing Officer (HO) found a likelihood of confusion between the stylised mark ITS AN ADDICTION (the Contested Mark), applied for in relation to clothing in class 25, and the earlier plain word mark ADDICTION, registered for identical goods.

Jamie Bunyan and Stephanie Afonso Cadete (the Applicants) filed the UK application for the Contested Mark on 17th September 2017. London IP Exchange Ltd opposed, basing its opposition on s5(2)(b) of the Trade Marks Act 1994 and a UK trade mark registration for the plain word mark ADDICTION (the Earlier Mark), registered in class 25 and relied on insofar as it was registered for clothing.

A history between the parties was briefly alluded to in the decision and a search of the UK register reveals that the Applicants had previously applied for a trade mark very similar in appearance to the Contested Mark; the only difference being the absence of the words ITS AN.

Considerations 

The goods of the application and the Earlier Mark were identical. The HO found, with reference to guidance from T-117/03 New Look v OHIM, that the average consumer of clothing is a member of the general public who typically pays an average level of attention, and that the act of purchasing clothing is primarily a visual process. Aural considerations may also play a role via word of mouth recommendations, or where a shopper is assisted by sales staff.

Turning to a comparison of marks, the dominant and distinctive component of the Contested Mark was held to be the word ADDICTION, corresponding to the entirety of the Earlier Mark. Although the Contested Mark differed from the Earlier Mark due to the presence of ITS AN within the letter A of ADDICTION, and the underlining of the letters –TION, these elements, the HO said, were “much smaller in scale, play only a weak role and have much less visual impact”. The marks were found to be visually and conceptually similar to a high degree and aurally similar to a medium degree if the words ITS AN were verbalised, and aurally identical if they were not.

Findings

The HO found the goods to be identical and considered that the average consumer would pay a reasonable degree of attention during a primarily visual purchasing process. The HO found a high degree of similarity between the marks overall and considered that the Earlier Mark had an average degree of inherent distinctiveness. Bearing in mind the principles of interdependency and imperfect recollection, and specifically remarking on visual similarity being a “key factor” in her decision, the HO held there was a likelihood of direct confusion. 

The opposition under s5(2)(b) therefore succeeded, an unsurprising decision given the identical goods, the overwhelming dominance of the word ADDICTION in the composition of the Contested Mark and the failure of the (unrepresented) Applicants to support a contention that several ADDICTION marks coexist on the register, with evidence of coexistence on the market. The decision to refuse the application was still open to appeal at the date of writing.

Donna Trysburg is a Chartered Trade Mark Attorney at Boult Wade Tennant LLP

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