Lay approach found lacking

19th Oct 2020

A more experienced applicant may have conveyed the necessary nuance, says Charlie Bond. O/336/20, Cross and Heart Device (Opposition), UK IPO, 23rd June 2020

Clothes

On 28th July 2019, the unrepresented Louis Bollard applied for the figurative UK trade mark shown below (application No. 3417088).

In return, on 18th October 2019, German clothing retailer Blutsgeschwister GmbH (the Opponent) filed an opposition under s5(2)(b) of the Trade Marks Act 1994, relying on its EU trade mark No. 14647606, registered on 6th June 2016.

The specifications for both marks covered items of clothing in class 25.

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Application 3417088

The Applicant argued that it only intended to use the mark on T-shirts marketed and sold to female Christians through limited UK-based distribution channels (eg, at Christian festivals). The Applicant contended that, in contrast, the Opponent sold its goods predominantly in Germany, through stores and online.

The Registrar found these arguments misconceived because the Opponent’s mark had not been registered for more than five years and so it did not need to prove use. Instead, all that was needed was a fair and notional comparison of the specifications.

The Registrar relied on the inclusion principle, by which goods designated by an application are identical if they are included in a general category designated by an earlier mark. Here, the term “clothing” appeared in both specifications, which encompassed all the goods in the Applicant’s specification.

The Registrar then defined the average consumer as:

  1. Reasonably well informed and circumspect;
  2. A member of the general public, and not necessarily a Christian;
  3. Selecting goods based primarily on visual considerations in shops/on websites; and
  4. Someone who will pay a medium degree of attention to selection, having in mind cost, size, colour, material and item compatibility.

Comparisons

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The opponent's mark EUTM NO. 14647606

The Registrar compared the marks, referencing the established principles that the average consumer normally perceives marks as a whole, with visual, aural and conceptual similarities being compared by reference to the overall impression they create, bearing in mind their distinctive and dominant components. 

The Registrar found medium visual similarity, considering there are differences, but bearing in mind the size of the heart and cross in the Applicant’s mark and the fact that a cross and heart appear at the start of the Opponent’s mark.

As there are no word elements, there was no aural comparison. As regards conceptual comparison, the Applicant argued without evidence that the equals sign in its mark is important because it explains that Christianity is love, whereas the Opponent’s mark stems from seafaring. The Registrar found that because both marks evoke the concept of a sequential cross and heart there is a medium degree of conceptual similarity.

Likelihood of confusion

Given the medium degree of visual and conceptual similarity, the goods being identical, the inherent distinctiveness of the earlier mark (because it does not allude to the registered goods) and the average consumer not making direct comparisons, the Registrar found that there was a likelihood of direct confusion, so the opposition succeeded.

The decision is uncontroversial, but had the Applicant produced evidence of, for example, how its mark would be conceptualised by the average consumer, it may have won. This is therefore primarily a lesson in the importance of seeking legal expertise when a trade mark application hits the rocks.

Key points

  • Unrepresented applicants can often miss or misunderstand the legal nuances of an opposition    
  • Arguments must be backed up with supporting evidence or they will lack persuasiveness 
  • When the specified goods are identical, this fact can be used to compensate for a less clear similarity between the marks themselves

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Survey evidence did not cement its arguments, notes Sharon Kirby. O/353/20, KO-CO (Opposition), UK IPO, 15th July 2020

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