Beauty registration cut short

1st Sep 2019

Indirect confusion over crop was compelling, writes Beverley Robinson. O/242/19, THE BEAUTY CROP (Invalidity), UK IPO, 10th May 2019.

Beauty registration cut short

O/242/19, THE BEAUTY CROP (Invalidity), UK IPO, 10th May 2019

Here, The Beauty Crop Ltd (the Proprietor) registered THE BEAUTY CROP logo for a range of cosmetic products in class 3 (the Registration).

Lyme Hall Pty Ltd (the Applicant) applied to have the Registration declared invalid on the basis of its earlier EU trade mark registration for CROP in a stylised typeface, covering “cosmetics including creams, lotions, gels and powders for the face, the body and the hands and make-up preparations for the face”. It sought invalidation on s5(2)(b) EUTMR grounds: the high similarity between the marks and the identity or high similarity between the goods give rise to a likelihood of confusion. The Proprietor filed evidence in defence to the invalidation relying on, in particular, an absence of actual confusion.

Consumer considered

In determining the average consumer for the goods, the Hearing Officer (HO) considered that the goods were ordinary consumer goods bought fairly often by the general public, who would have a medium degree of attention when selecting these products.  

In line with the principle outlined in Meric, all of the goods identified in the contested specification as “cosmetics” fell within the broad term “cosmetics” in the earlier specification and were therefore identical; the term “including” in the earlier specification did not limit the coverage to the goods that followed. All of the remaining goods were highly similar, except facial wipes/pads, perfumery and hair lotions, which were similar to a low degree.

The Proprietor argued that the common CROP element of the marks lacked distinctive character when used in the context of cosmetics and would generally be understood as referring to “the produce of the field, or to the annual or season’s yield of any natural product”. While the HO accepted that the word “crop” may be very mildly suggestive of natural ingredients, this was not sufficient to weaken the inherent distinctiveness of the mark. 

The marks were considered visually and aurally similar to a fairly low degree, but conceptually similar to a high degree. The HO rejected the Proprietor’s argument that the inclusion of additional words in the contested mark altered the meaning of the individual words. Although the HO considered the additional words to add the concept of beauty to the later mark, the meaning of “crop” remains intact and the conceptual differences arising from the additional words have little or no distinctive significance.

Conceptual concern

In terms of direct confusion, the HO considered the visual differences between the marks and the slightly unusual phrasing of the later mark to be sufficient to avoid the consumer thinking that one mark is the other. However, when considering the notion of indirect confusion, it was felt that the conceptual similarities outweigh the visual differences and consumers are likely to believe that the contested mark is another brand of the Proprietor – even for the goods with a low degree of similarity.

As such, the application for invalidation succeeded in full and the Registration was declared invalid.

Key points

  • Even where there is no likelihood of direct confusion, indirect confusion can occur if the average consumer thinks that the later mark is another brand of the owner of the earlier mark or a related undertaking
  • It is not necessary for parties to provide evidence that there will be confusion.  Furthermore, without strong evidence that the relevant consumer has encountered both marks it will be difficult to argue that an absence of evidence of actual confusion is significant

Beverley Robinson is a Chartered Trade Mark Attorney and Associate for Walker Morris LLP