Crossing the language barrier
Close conceptual similarity may mean confusion cannot be ruled out, opines Désirée Fields. O/337/19, BLACK SHEEP (Opposition), UK IPO, 13th June 2019.
O/337/19, BLACK SHEEP (Opposition), UK IPO, 13th June 2019
In June 2018, Black Sheep Brewery Plc (the Applicant) applied for BLACK SHEEP as a UK trade mark in respect of alcoholic beverages in class 33. Baron Phillipe De Rothschild S.A (the Opponent), proprietor of UK trade mark MOUTON CADET (meaning “young sheep”), opposed the application under s5(2)(b) and 5(3) of the Trade Marks Act 1994, arguing that: (i) the mark applied for would cause likelihood of confusion with its own mark; and (ii) the use of the mark applied for would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark.
The Hearing Officer (HO) found that there were two relevant categories of average consumers: French speakers and non-French speakers. There was no visual or aural similarity between the parties’ marks, meaning that the main point of contention was conceptual similarity. For non-French speakers, the only potential connection between the BLACK SHEEP and MOUTON CADET marks was the association of “mouton” with the English word “mutton”. However, having identified the words as foreign, it was deemed unlikely that an individual would try to make associations with similar-sounding English words. Accordingly, there was no likelihood of confusion between the two marks for non-French-speaking consumers.
Despite the similarities in the literal meaning of each mark, the same conclusion was reached regarding French-speaking consumers. The proportion of French speakers capable of translating the Opponent’s mark was deemed insufficient and, for those that were capable of translation, the lack of visual similarity between the marks and the dual meaning of “black sheep” meant that it was unlikely that they would mistakenly recall one brand in place of the other. The possibility of indirect confusion (acknowledging the differences between the two brands but assuming, due to similarity, that the marks have originated from economically linked undertakings) was also dismissed since “neither mark is a logical extension of the other”.
The lack of any similarity between the respective parties’ marks meant that the case under s5(3) fell at the first hurdle regarding non-French-speaking consumers. For French speakers, the lack of any aural or visual similarity between the marks and the limited conceptual similarity suggested that the relevant public would still be unable to make a link in their minds. Accordingly, the opposition failed in its entirety.
While here there was insufficient conceptual similarity between the English-language mark applied for and the earlier foreign-language mark, it is not difficult to imagine a situation where the literal meaning of two marks is more closely aligned. The reasoning of the HO suggests that even if an earlier mark is in a language that is not spoken by the majority of the relevant public, conceptual similarities and a likelihood of confusion may still be found.
- Where there is potential conflict between two trade marks, one of which is in a foreign language, the likelihood of confusion between these marks must be assessed in relation to both those who do and those who do not speak that foreign language
- It is possible to find a likelihood of confusion between an English language mark and foreign language mark if they are conceptually identical or similar. However, a global assessment between the two marks must still be carried out
Désirée Fields is a Legal Director at DLA Piper UK LLP
With thanks to Joshua Tray, Intern at DLA Piper UK.
Legal Director, DLA Piper UK LLP