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 reviews another UK IPO case where Shine TV, owners of the well known MASTERCHEF trade mark opposed an application for Mister Chef . As we will see it was whisks at dawn but did Masterchef manage to prevent its souffle from collapsing?
The Masterchef trade mark opposition case illustrates that the final outcome often rests upon a comparison of the two trade marks at issue. When making that comparison, the tribunal has to assess the similarity of the marks from a visual, phonetic and conceptual point of view. In most cases, if the marks are too close visually and phonetically, then that decides the matter; a finding that the marks are likely to be confused will be made. However, on rare occasions, if two marks are visually and phonetically similar, but are at the same time, dissimilar from a conceptual angle, then the conceptual difference can overwhelm the other similarities. This leads to a finding that the two marks are not confusingly similar. These very circumstances were found in a trade mark opposition (Mr Chef v Shine TV; O-228-18) that was recently decided by the UK Trade Marks Office.
The opposition as filed
Mr Chef Limited had filed a UK trade mark application for Mister Chef covering a range of baking, cooking and other kitchen utensils in Class 21. The UK application was opposed by Shine TV, the owner of the rights, including the trade mark rights, in the well-known TV series MasterChef. The opponent relied on a number of earlier UK and EU trade mark registrations for MASTERCHEF in Classes 21 (kitchen utensils and containers) and 41 (TV entertainment services). The grounds of opposition were section 5(2)(b) of the 1994 Trade Marks Act (similarity of marks and Class 21 goods; likelihood of confusion) and section 5 (3) of the Act (similarity of marks; reputation in MASTERCHEF; unfair advantage or detriment).
Are the trade marks identical or similar?
The UK Hearing Officer, Mr Allan James, dealt first with the section 5(2)(b) ground. He began by finding that the Class 21 goods applied for and the Class 21 goods claimed in the opponent’s earlier trade mark registrations were identical or highly similar. He also accepted that such baking/cooking/kitchen goods would be purchased by both professionals and the general public who would pay a normal degree of attention when doing so. According to Mr James, this purchasing process would be mainly a visual one from in–store displays/shelves, websites or published advertisements. However, oral recommendations and orders would also play a part. So, the way the marks were pronounced should also be considered.
As to the inherent distinctiveness of the earlier mark MASTERCHEF in relation to the Class 21 goods at issue, the Hearing Officer decided that, since there was a clear allusion in the opponent’s mark to the goods being good enough for use by a “master chef”, the earlier mark had a below average degree of inherent distinctiveness in relation to the Class 21 goods at issue. Since the opponent had put forward no evidence of use of its trade mark MASTERCHEF in the UK in respect of Class 21 goods, the overall level of distinctiveness for such goods was deemed to be below average.
What about conceptual similarity?
Mr James then turned to the comparison of the earlier marks MASTERCHEF and the mark applied for, Mister Chef. Not surprisingly, he found that the two marks are highly similar both visually and phonetically. When it came to a conceptual comparison, however, he took a different view. According to Mr James, the trade mark Mister Chef would be understood as referring to a person or a chef called Mister Chef. By contrast, the opponent’s mark MASTERCHEF will be taken to mean a highly skilled chef. It followed that, when compared as wholes, the two marks have quite distinct meanings and would be seen as conceptually dissimilar.
Is there a likelihood of confusion?
Taking that into account, plus the below average distinctiveness of MASTERCHEF, as well as the fact that the difference in spelling between the mark applied for in the opponent’s mark appeared towards the beginning of the marks (Mister Chef vs MASTERCHEF), the Hearing Officer ruled that the differences between the two marks was sufficient to avoid a likelihood of confusion. This conclusion also took into account the possibility of consumers misreading or mishearing one or the other of the marks. It also considered and rejected the possibility of imperfect recollection.
It follows that, on the basis of the above global assessment, Mr James rejected the opponent’s section 5(2)(b) ground of opposition.
The reputation of the opponent down and out
He then turned to the section 5(3) opposition. The Hearing Officer accepted that the opponent had a substantial reputation in the trade mark MASTERCHEF for “a television series in the reality genre in the field of cooking and food and presentation of competitions, games and studio entertainment”. He also accepted that there is a link between the marks Mister Chef and MASTERCHEF since they are both connected with cooking and therefore the section of the public who are potential users of Mister Chef Class 21 goods are likely to be aware of the MASTERCHEF TV series.
In spite of all these factors in favour of the opponent, the Hearing Officer still took the view that the conceptual difference between the two marks trumped them. In Mr James’ view this conceptual difference, together with the spelling difference between Mister Chef and MASTERCHEF, would be enough to avoid a likelihood of confusion. Further, in the Hearing Officer’s judgment, the relevant UK public would not make any link between the Mister Chef branded Class 21 goods applied for and the reputed MASTERCHEF entertainment services. The absence of any evidence of UK sales of merchandise associated with the MASTERCHEF TV series also weighed against the opponent in Mr James’ opinion.
Taking all of the above into account, the section 5(3) ground of opposition was rejected and with it, Shine TV’s opposition.
This trade mark opposition case shows that, in the right circumstances, even a small differentiation between two marks can make a significant, decisive difference. Trade mark authorities, especially the EUIPO and the Court of Justice of the European Union, often take a very conservative view on the similarity of marks. Indeed, CJEU case law is littered with cases where the two marks have been found to be similar when, in fact, the veritable moron in a hurry would fail to exhibit confusion.
The writer has noted that Mister Chef cooking (kitchen) equipment does, in fact, coexist on the UK market with a MASTERCHEF food processor (and branded accessories); the latter products being sold by the international kitchen equipment retailer, Moulinex, rather than by a licensee of Shine TV. In this case, therefore, the position of the trade mark register reflects the position in the market. The purchasing public is generally far more sophisticated and discerning than many trade mark authorities believe them to be.
Dr Stephen James
Ward Trade Marks
Ward Trade Marks conducts contentious trade mark proceedings before the UK and the EU IPO. If you need more information on opposing a trade mark application or defending an opposition: