22/06/2016
A recent trade mark decision by a Hearing Officer of the UK IPO highlights the following issues:
- The importance of understanding and abiding by the specific rules applying to fast-track oppositions and;
- Whether or not there is in fact a likelihood of actual confusion in the marketplace may be irrelevant to the outcome of opposition proceedings.
Cosmetic Warriors (the applicant) applied to register the mark BOMBSHELL in the UK for perfumes, toiletries and the like and for services relating to the sale of such goods.
When this application was published, Victoria’s Secret Stores Brand Management, Inc (the opponent) filed a ‘fast-track’ opposition against it. The opposition was based on EUTM registrations of VICTORIA’S SECRET BOMBSHELL and BOMBSHELLS IN BLOOM, both covering personal care and perfumery products. These marks had not been on the Register for five years and so were not subject to proof of use.
The rules applying to ‘fast track’ oppositions require the parties to seek leave if they wish to file evidence (other than any necessary proof of use evidence). Neither party applied for leave to file evidence, but the applicant filed evidence together with their submissions. No account was taken of this evidence since it had been filed without permission.
In its counterstatement and submissions, the applicant relied upon a number of factors which it stated would avoid a likelihood of confusion, namely that:
- the parties were using the marks in different ways for very different reasons;
- the pattern of trade mark filings carried out by the opponent meant that one particular meaning must be attributed to its mark;
- each party had an extensive reputation in a distinct field;
- the applicant owned a number of marks containing the word “BOMB” already on the Register.
The Hearing Officer gave a very clear explanation of why, as a matter of law, none of these factors could have any bearing on the outcome of the opposition. In particular, she stressed that the earlier marks are entitled to protection against a likelihood of confusion with the applicant’s mark based on ‘notional’ use of the earlier marks for all the goods listed in the Register.
This concept of ‘notional use’ was explained by Laddie J. in Compass Publishing BV v Compass Logistics Ltd ([2004] RPC 41) like this:
“22. It is possible to register a mark which is not being used. Infringement in such a case must involve considering notional use of the registered mark. In such a case there can be no confusion in practice, yet it is possible for there to be a finding of infringement. Similarly, even when the proprietor of a registered mark uses it, he may well not use it throughout the whole width of the registration or he may use it on a scale which is very small compared with the sector of trade in which the mark is registered and the alleged infringer’s use may be very limited also. In the former situation, the court must consider notional use extended to the full width of the classification of goods or services. In the latter it must consider notional use on a scale where direct competition between the proprietor and the alleged infringer could take place”.
The Hearing Officer also stressed that when assessing the likelihood of confusion in the context of registering a new trade mark, it is necessary to consider all the circumstances in which the mark might be used if it were registered. Any differences between the goods and services actually provided by the parties, or differences in their trading styles or marketing approach, are irrelevant unless those differences are apparent from the applied-for and registered marks and their respective specifications. The existence of other trade marks on the register, no matter who they belong to, is not relevant.
Finally, the Hearing Officer pointed out that since the opponent did not seek to rely on enhanced distinctive character due to use made of its marks, any reputation the parties may have is not relevant.
The Hearing Officer considered that the opponent’s strongest case was in relation to the mark VICTORIA’S SECRET BOMBSHELL, so she focused on that mark. She considered that the average consumer would not simply mistake one mark for the other, and so found that there was no risk of direct confusion. However, she found that there was a risk of indirect confusion, in that there would be an expectation on the part of the average consumer that all of the goods and services at issue come from the same or economically linked undertakings.
Accordingly, the opposition succeeded in full, with costs awarded to the opponent.
Trade mark decision O/279/16 dated 7 June 2016 – Hearing Officer Ms H Harrison.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
