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.

He serves up another corker of an article reviewing a recent opposition decision before the UK IPO and contrasts that against a set of older EUIPO cases involving the same opponents and near identical facts. The cases highlight the (in)consistency ofrulings at the European Court and the EUIPO – which, he asserts, is exacerbated by the multiplicity of languages across the EU.

Once, in a galaxy far, far away, trade mark confusion reared its head. It was hoped that we had entered a new era of harmonisation in EU trade mark decision making. However, this utopia has failed to materialise for two proposed reasons. The first stumbling block has been the shocking lack of consistency shown by the European Court and the EUIPO in its trade mark rulings. The second hurdle has been the polyglot medley of languages that are found in the EU. A recent opposition (O-055-18 Room Seven B.V. v Seven S.p.A.) before the UKIPO perfectly illustrates the difficulty.

Seven v Room Seven

Room Seven, a Dutch clothing and accessories company, filed a UK trade mark application for its house mark (Room Seven) claiming Class 18 goods, in particular a variety of bags. This UK application was opposed by the Italian clothing company, Seven S.p.A., under section 5(2)(b) of the Trade Marks Act 1994 (likelihood of trade mark confusion). The Italian opponent relied on its earlier EU trade mark registration for Seven (word) covering a variety of goods in Classes 16 and 18. The goods in the earlier EUTM were identical or very similar to those in Room Seven’s UK filing.

The opponent’s EUTM had been registered for over five years and was therefore subject to proof of use requirements. The Italian company did file evidence of the use of the EU registered mark in respect of (some of) the goods claimed, although this use was primarily of the stylised mark shown below:

Seven trade mark confusion case

For reasons that will become clear, however, the UK Hearing Officer (Mr Bryant) did not consider whether or not this use by Seven S.p.A. of its logo, constituted genuine use of their registered word mark Seven.

Instead, he moved on to a comparison of the two marks and the two sets of goods. Here he decided that:

  • “The respective goods are identical or highly similar;
  • The respective marks share a low to medium level of visual similarity, no higher than a medium level of aural similarity and I also found that they are conceptually dissimilar;
  • The distinctive character of both marks resides in their totalities with the two separate words creating the applicant’s mark forming a unit that describes a room codified by the numeral “seven”;
  • The purchasing process is mainly visual in nature, but I keep in mind that aural considerations may play a role;
  • The level of care and attention paid by the average consumer in the purchase of the relevant goods is reasonable rather than high;
  • The opponent’s mark is endowed with a moderate degree of inherent distinctive character and that this is not enhanced through use.”

Conceptual difference outweighing visual and aural similarities

Bearing the above in mind, Mr Bryant then considered the key issue which he stated to be whether the word Seven retains an independent distinctive role in the UK applicant’s mark. That is, would the average UK consumer perceive the trade mark Room Seven as identifying goods that originate from the opponent or from an entity linked to the opponent? In the Hearing Officer’s view, the phrase Room Seven had a completely different meaning to the word Seven on its own. This conceptual difference, outweighing any visual or aural similarities, would ensure that there would be no likelihood of confusion between the mark applied for and the opponent’s mark. On this basis, he dismissed the opposition and allowed the application for Room Seven to proceed.

This case should be contrasted with the Italian company’s opposition (Appeal Decision R955/20012-4) to Room Seven’s International trade mark application (No. 10014081) designating the EU. The relevant facts in this EU opposition were almost identical to those in the UK opposition. The main (factual) difference in the IR (EU) opposition was that both the EUIPO Opposition Division and the Appeal Board accepted that Seven S.p.A. had proved a high level of recognition in the trade mark Seven (word and logo) for bags in Italy.

A likelihood of bewilderment… at least in Italy

The Opposition Division ruled in favour of the Italian opponent and the Dutch company appealed. Before the Fourth Board of Appeal, the deciding factor was their inability or unwillingness to recognise any conceptual difference between the two marks Room Seven and Seven. Indeed, they were more inclined to accept a “certain conceptual link” between the two marks, given the common presence of the word Seven. For this reason, and given the average visual and phonetic similarities between the mark applied for (Room Seven) and the earlier mark (Seven), as well as the identical/very similar nature of the two sets of goods, the Appeal Board dismissed the appeal and, with it, the Dutch company’s International designation of the EU, insofar as it claimed Class 18 goods. In the Appeal Board’s view, there was a likelihood of trade mark confusion, at least in Italy.

In a subsequent Appeal Board decision (R1490/2014-4), Room Seven was refused permission to convert their IR(EU) application into IR (EU national) applications outside Italy because the opposition by Seven S.p.A. was based on an earlier EUTM registration that was said to effectively knock out the whole of Room Seven’s EU claim.

UK consumers not likely to be confused

These Appeal Board decisions were issued in July 2013 and April 2015. They were therefore well known to the UK Hearing Officer when he issued his decision in January 2018. Mr Bryant’s views on the need to maintain a level of harmony in EU trade mark decision making are set out in his UK decision. He commented as follows:

  • “I am not bound to follow them and, as an independent decision maker, I must consider the facts before me and reach my own independent decision;
  • I note that decision R0955/2012-4 records that there is a likelihood of confusion “at least in Italy”. This stops short of concluding that there is a likelihood of confusion for UK consumers, and;
  • Whilst the latter decision (R1490/2014-4) finds that the refused mark cannot be converted to national marks including a UK national mark, it was not because the finding of likelihood of confusion extended to the UK consumer, but because the earlier mark relied upon was a Community Trade Mark. In accordance with Article 112(2)(b) of the Community Trade Mark Regulation, the unitary nature of a Community Trade Mark is such that a relative grounds finding that confusion is likely in one territory of the EU is sufficient to prevent conversion to national marks in any other EU territory. However, it does not necessarily follow that the consumers in other EU territories will also be confused.”

To paraphrase the Irish playwrights, Oscar Wilde and George Bernard Shaw, Britain and America are two nations separated by a common language. In the EU, trade mark harmonisation will inevitably be thwarted, at least to some extent, by the 23 official and separate languages. This will still be the case, even if the UK decides to throw itself, lemming-like, off the Brexit cliff.

Dr Stephen James
Ward Trade Marks

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