Our guest blogger Dr Stephen James writes again for Ward Trade Marks.Stephen is a past president of CITMA, and a leading practitioner with almost 40 years’ experience in UK and EU trade mark law.
This time he tackles the knotty problem of lookalike products, a perennial issue for many brand owners:
Lookalike branding is an issue that can affect any company. In a recent opposition decision of the UKIPO (ABC Deterjan v Proctor & Gamble; O-550-17), some hope has been offered to brand owners in their fight against lookalike products.
Ariel first launched in 1967
Proctor & Gamble (P&G) markets a highly successful line of laundry detergents under the brand name ARIEL. The ARIEL product was the first detergent with stain-removing enzymes. It was launched in the UK in 1967. Since then, the range of ARIEL products has expanded to include liquid detergent and compact powders. One of these brand extensions is ARIEL ACTILIFT.
In addition to its well-known word marks, P&G’s ARIEL detergent products also bear reasonably distinctive device marks. One of these (device) marks (protected for Class 3 goods by EUTM 9939984) is known as the “Atomium” mark since it was “inspired” by the Brussels Atomium, a landmark building in the Belgian capital that was originally constructed for the 1958 World’s Fair.
Another ARIEL device mark, one that is widely used on the ARIEL ACTILIFT range, consists of two overlapping orbits in green and blue and the central green oval, diagonally placed, which gives the impression of a third orbit. The combination of these figurative elements forms a star-like shape. This device, in combination with the words ARIEL ACTILIFT, is protected (again in Class 3) by P&G’s EUTM 7437874. Images of the marks covered by Procter & Gamble’s EUTM 9939984 and 7437874 are shown below.
The Turkish company, ABC Deterjan, was founded in 1972. It develops, manufactures and markets household cleaning products including laundry detergents. It, therefore, competes with P&G in this household cleaning sector, both in Turkey and elsewhere.
A number of ABC Deterjan’s products are sold, in Turkey at least, under its ABC house mark. This house mark is accompanied by a device mark which consists of two intersecting orbits in yellow and red on a lighter blue diagonal oval which gives the impression of a third orbit. The combination of these elements forms a star-like shape. The ABC house mark also contains a blue horizontal oval on whose surface appears the letters ABC (in white). The ABC Deterjan house mark is shown below.
International trade mark application for 43 countries including the UK
As P&G’s Turkish competitor seeks to broaden its markets, so it also seeks to broaden its trade mark protection. Part of this strategy involved filing an International Trade Mark application (number 1291862) for the ABC house mark shown above. This IR designated 43 countries including the United Kingdom. It was at this point that the unpleasantness began.
ABC Deterjan’s UK designation was published in August 2016. It claimed the following Class 3 and 5 goods:
- Class 3: Bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers; dishwasher detergents; perfumery; cosmetic; fragrances; deodorants for personal use and animals; soaps.
- Class 5: Pharmaceutical and veterinary preparations for medical purposes; chemical preparations for medical and veterinary purposes, chemical reagents for pharmaceutical and veterinary purposes; sanitary preparations for medical use; hygienic pads; hygienic tampons; plasters; materials for dressings; diapers, including those made of paper and textiles.
Opposition based on the likelihood of confusion and reputation/ unfair advantage of the lookalike brand
P&G opposed under Section 5(2)(b) (likelihood of confusion) and 5(3) (reputation/unfair advantage) of the UK’s Trade Marks Act 1994. They relied on their registered EUTMs for the Atomium Device mark (EUTM 9939984) and the ARIEL ACTILIFT combination mark (EUTM 7437874), as well as on their reputation in both marks in the UK, and the EU more widely.
The Hearing Officer’s decision
In her decision, the Hearing Officer (Ms T. Perks) accepted that P&G’s evidence was sufficient to establish a UK reputation in both of the earlier marks relied on (by P&G) for laundry products.
The Hearing Officer also ruled that the differences between the ABC mark applied for and P&G’s Atomium were so significant that there could be no likelihood of confusion (direct or indirect) between ABC Deterjan’s mark and goods and the opponent’s Atomium mark and goods.
Although Ms Perks found a greater similarity between the mark applied for and P&G’s ARIEL ACTILIFT combination Mark, she again found that there was no likelihood of direct or indirect confusion between these two marks and two sets of goods. As far as the likelihood of direct confusion was concerned, the Hearing Officer commented as follows:
“…I find that the device elements of the competing marks are similar to a good degree. However, even taking into account the degree of similarity between the colour schemes used in the marks, the similar positioning of the word elements, and the fact that the first letter of each mark is the letter A, the different letters ABC in the IR certainly appear in such a prominent position that, even where an average degree of attention is deployed, identical goods are involved and the earlier mark benefits from enhanced distinctiveness, the average consumer is unlikely to be confused between the ABC mark and the ARIEL ACTILIFT mark as wholes. There is therefore no likelihood of direct confusion between the IR and the ARIEL ACTILIFT mark”.
Turning to the question of indirect confusion between the mark and goods applied for and P&G’s ARIEL ACTILIFT mark and goods, Ms Perks found as follows:
“whilst the similarities between the competing marks derive from the devices, which are distinctive elements of the marks, the devices are not identical. Further, although the use of the same colours, they do not use the same colour scheme. Further still, the prominent display in the IR of the letters ABC (which is a dominant and distinctive element of the mark), is likely to be perceived as denoting who makes the goods, i.e. a trader called ABC. In those circumstances, whilst the IR may call to mind the opponent’s mark, it is unlikely that the public will believe that the ABC mark is a brand extension of the ARIEL ACTILIFT mark. A brand extension would not normally replace a household name with a different brand name.”
No likelihood of confusion
On this basis, the Hearing Officer found that there was no likelihood of indirect confusion between the lookalike brand of ABC and the ARIEL ACTILIFT mark and goods. She, therefore, dismissed P&G’s opposition insofar as it relied on section 5(2)(b)) of the 1994 Act.
Ms Perks then moved on to section 5(3) ground of opposition, based on P&G’s reputation in its marks in the UK, and the Turkish applicant taking unfair advantage of that reputation. As mentioned above, the Hearing Officer accepted that P&G had proved that it had a UK reputation in its two marks in respect of laundry products. She then considered whether a link would be made between ABC Deterjan’s mark and Procter & Gamble’s ARIEL ACTILIFT combination mark. Such a link is necessary, under UK and EU trade mark law, to establish a case based on reputation and unfair advantage, see Adidas v Fitnessworld (C–408/01). On this point, the Hearing Officer ruled as follows:
“carefully weighing all of the aforementioned factors against each other, I come to the conclusion that the similarities that exist between the respective marks together with a strong reputation of the earlier mark will result in the IR bringing to mind the ARIEL ACTILIFT mark when encountered on identical or highly similar goods, namely bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers and dishwasher detergents. In other words a link will be made”.
Ms Perks finally turned to the question of whether or not the use of the lookalike brand mark applied for would take unfair advantage of P&G’s reputation in its ARIEL ACTILIFT mark. She first accepted that it was unnecessary for P&G to prove that it had been ABC Deterjan’s intention to exploit their (P&G’s) reputation for the opponent to succeed under this ground of opposition. She then moved on to the substance of the matter and ruled as set out below:
“I find that there is a non-hypothetical risk in respect to the following:
Class 3: Bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers; dishwasher detergents (“the linked goods”).
That the link consumers will make between the respective marks will result in the positive characteristics associated with the ARIEL ACTILIFT mark, namely the marks’ reputation for high-quality laundry products that work well at low temperatures, being transferred to the IR. This association with the opponent’s reputed mark would give the (IR) holder customers it would not otherwise have enjoyed and make its job of marketing its goods easier. As this would come without paying any compensation to the opponent, and without the holder expending the money necessary to create a market for its own goods in the UK, this is unfair advantage. The holder has not pleaded any “due cause” defence. The ground under section 5(3) succeeds.”
Partial success for the linked goods only
Following this determination, the Hearing Officer rejected ABC Deterjan’s IR (UK) trade mark application in relation to the linked goods. She then dismissed P&G’s opposition and allowed the IR application to proceed in respect of the remaining (non-listed) Class 3 and 5 goods.
Given that Ms Perks did not believe that P&G’s Section 5(3) opposition based on its Atomium rights was any stronger than the Section 5(3) opposition based on its ARIEL ACTILIFT rights, she declined to consider this additional ground of opposition.
In the writer’s view
An English Court with its misplaced views on competition, including unfair competition, would be rather unlikely to reach the same decision as the Hearing Officer in the above opposition. For now however this decision might make the legal advisers of UK supermarkets, when considering the acceptability of the latest lookalike to come off the “lookalike” production line, take a slightly more cautious approach when weighing up whether their client’s latest imitation is too close to the mark and get up of a successful, branded product.
Dr Stephen James
Ward Trade Marks
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