House & Garden

22nd Jul 2019

A conceptual disconnect delivered for Sekoya, writes Oliver Tidman. O/196/19, SOHO GARDEN (Opposition), UK IPO, 11th April 2019.

House & Garden

O/196/19, SOHO GARDEN (Opposition), UK IPO, 11th April 2019

On 13th December 2017, Sekoya Hotels & Resorts Ltd (Sekoya) applied to register the SOHO GARDEN device mark in classes 41 and 43. The application was opposed by Soho House Ltd (Soho) under s5(2)(b) and 5(3) of the Trade Marks Act 1994 (the Act), based on its earlier EU trade mark registration for SOHO HOUSE.

Soho claimed that the words SOHO HOUSE had a reputation for “entertainment” and “club services” (entertainment or education) in class 41 and class 43 services. It also argued Sekoya’s mark would take unfair advantage of and be detrimental to the repute and distinctive character of Soho’s SOHO HOUSE mark. 

Average consumer

Sekoya filed a counterstatement denying the grounds of opposition. As a preliminary matter, the Hearing Officer (HO) stated that the existence of other traders using the word SOHO, as submitted by Sekoya, was not relevant to the conflict between the marks in issue. Interestingly, Sekoya made no submissions regarding the average consumer of its services under the mark. The average consumer was considered to be a member of the public or a business user. 

No association

When analysing Sekoya’s mark, the HO noted the absence of the word HOUSE, with the shared word SOHO alone being attributed less weight as a well-known entertainment district in London. Due to its size and central position, the insect device was the dominant distinctive element. The word HOUSE in Soho’s mark and GARDEN in Sekoya’s mark, with the insect device not being pronounced, created a point of aural difference to a medium degree. 

However, there were significant visual and conceptual differences between the marks, leading the HO to conclude that the level of visual and conceptual similarity was low. The HO reasoned that the word GARDEN is more likely to be seen by the average consumer as a reference to a green area in Soho rather than a reference to a garden belonging to a particular house as argued by Soho. In dismissing Soho’s s5(2)(b) ground, the HO found that the marks were not similar enough to cause confusion. 

Soho filed evidence of reputation in its SOHO HOUSE mark in the UK. Taking into account the market share held by SOHO HOUSE, the intensity, geographical extent and duration of its use, and the promotional investment made by Soho, the reputation was considered to be in respect of private members’ club services only. It could not be relied on to support a claim to reputation extending to a substantial part of the relevant public for all the services in order to establish a link between the marks. Soho’s s5(3) ground was therefore rejected.

Key points

  • Geographical place names shared between marks are unlikely to suggest a connection leading to indirect confusion
  • Conceptual and visual differences between the marks were enough to avoid confusion for similar services
  • Evidence of use of a mark for the purpose of establishing enhanced distinctive character or reputation requires the mark to have been used for the registered goods or services

Oliver Tidman is Founder and Managing Director of Tidman Legal