BL O-598-20 TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO. 3434177 BY KAMINI NAIK TO REGISTER: RentHaul AS A TRADE MARK IN CLASS 25 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 419118 BY RENTHAL LIMITED BACKGROUND & PLEADINGS 1. On 6 October 2019, Kamini Naik (“the applicant”) applied to register RentHaul as a trade mark for the goods in class 25 shown in the Annex to this decision. The application was published for opposition purposes on 18 October 2019. 2. On 17 January 2020, the application was opposed in full by Renthal Limited. (“the opponent”). The opposition is based upon section 5(2)(b) of the Trade Marks Act 1994 (“the Act”). In its Notice of opposition, the opponent indicates that it relies upon all the goods in classes 12, 16 and 25 in European Union Trade Mark (“EUTM”) registration no. 1195270 for the word RENTHAL, which was applied for on 1 June 1999 and which was entered in the register on 9 April 2001. I note the registration includes a seniority date of 12 October 1971 from the UK. The opponent indicates that in the five year period ending on the date the application was filed, its trade mark had been used in relation to: Class 25 - Articles of outer clothing; articles of sports clothing; leisurewear; footwear being articles of clothing; headgear (for wear); shirts; boots; coats; overalls; ear muffs; T-shirts; socks; caps; hats; footwear; track suits; ties; gloves; headbands; boots; jackets; visors; waterproof clothing. 3. In its Notice of opposition, the opponent states: “The applicant’s mark is only one letter different to the opponent’s mark. Whilst it is presented in a combination of upper case and lower case letters the mark is visually very similar to the opponent’s mark. The mark is also conceptually similar and phonetically identical.” 4. The applicant filed a counterstatement in which she stated: “…The company Renthal Limited is an automotive company, supplying motorcross, road and cycling products. RentHaul, on the other hand, is a retail technology rental ecommerce service that offers rental clothing/accessories Page 2 of 32 services B2B and B2C. RentHaul's operating model is a returnable, circular business, i.e. consumers can return goods once used, as opposed to general transactions. Although the names are similar, they hold completely different services and ethos, for a customer to not be able to misunderstand the two. RentHaul also uses a mixture of lower case and upper case letters in order to differentiate the two words that showcase the service; "Rent" - to pay for the use of goods, service "Haul" - to define a shopping spree. There is no conflict of use when it comes to the two parties; Renthal Limited and RentHaul and a consumer/outsider would be able to clearly differentiate the two, there would be no question of confusing the two businesses as they stand alone within their own right and do not provide a scope creep, nor would they in the future…” 5. In these proceedings, the opponent is represented by TR Intellectual Property Ltd; the applicant represents herself. Only the opponent filed evidence. Neither party requested a hearing nor did they elect to file written submissions in lieu of attendance. The opponent’s evidence 6. This consists of a witness statement, dated 26 May 2020, from the opponent’s Chairman, Henry Rosenthal. Mr Rosenthal states: “7. In its Counter-Statement dated 21 March 2020, the Applicant has requested proof of use of the Opponent's Mark. Attached hereto is Exhibit "HR1", which provides an example of use of the Mark in relation to clothing articles. The Opponent confirms that use of the Mark in relation to Class 25 goods commenced in the 1980s and use has been continuous since that time. It should be noted that further evidence could be made available but due to the current situation with COVID-19 it has not been possible to access this at this time.” Page 3 of 32 7. As far as I can tell, exhibit HR1 is undated. It consists of a single page which looks like this: 8. The word “RENTHAL” can be seen in the exhibit on a T-shirt and a pair of socks. Although a baseball cap also appears in the photograph, no trade mark can be discerned. 9. In an official letter dated 28 May 2020 sent to the opponent’s professional representatives, the tribunal stated: Page 4 of 32 “Additional evidence It is noted that in paragraph 7 of the witness statement you state that ‘further evidence could be made available but due to the current situation with COVID-19 it has not been possible to access at this time’. You are referred to 4.8.5 of the manual of trademarks practice. https://www.gov.uk/guidance/trade-marks-manual/tribunal-section A party may ask to file additional evidence. The Tribunal will consider the reasons for the request, the nature of the evidence and the views of the other party. In considering a request to file additional evidence the Tribunal will primarily consider the following (Property Renaissance Ltd v Stanley Dock Hotel & Ors (2016) EWHC 3103 (CH)): • the materiality of the evidence in question to the issues that the Registrar has to determine; • the justice and fairness of subjecting the opposite party to the burden of evidence in question at the stage that the registry proceedings have reached, including the reasons why the evidence was not filed earlier; • whether the admission of the further evidence would prejudice the opposition party in ways that cannot be compensated for in costs ( for example excessive delay); and • the fairness to the applicant of excluding the evidence in question, including prejudice to the applicant if it is unable to rely on such evidence.” DECISION 10. The opposition is based upon section 5(2)(b) of the Act which reads as follows: Page 5 of 32 “5(2) A trade mark shall not be registered if because – (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. 5A Where grounds for refusal of an application for registration of a trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.” 11. The trade mark being relied upon by the opponent qualifies as an earlier trade mark under the provisions of section 6 of the Act. As this earlier trade mark had been registered for more than five years at the date the application was filed, it is subject to the proof of use provisions. As I mentioned earlier, in its Notice of opposition the opponent stated it had used its trade mark in relation to the goods shown in paragraph 2 above and, in her counterstatement, the applicant asked the opponent to make good on that claim. Proof of use Section 6A: 12. This reads as follows: “(1) This section applies where (a) an application for registration of a trade mark has been published, (b) there is an earlier trade mark of a kind falling within section 6(1)(a), (b) or (ba) in relation to which the conditions set out in section 5(1), (2) or (3) obtain, and Page 6 of 32 (c) the registration procedure for the earlier trade mark was completed before the start of the relevant period. (1A) In this section “the relevant period” means the period of 5 years ending with the date of the application for registration mentioned in subsection (1)(a) or (where applicable) the date of the priority claimed for that application. (2) In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met. (3) The use conditions are met if – (a) within the relevant period the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or (b) the earlier trade mark has not been so used, but there are proper reasons for non- use. (4) For these purposes - (a) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and (b) use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. (5) In relation to a European Union trade mark or international trade mark (EC), any reference in subsection (3) or (4) to the United Kingdom shall be construed as a reference to the European Community. (5A) In relation to an international trade mark (EC) the reference in subsection (1)(c) to the completion of the registration procedure is to be construed as a reference to the publication by the European Union Intellectual Property Office Page 7 of 32 of the matters referred to in Article 190(2) of the European Union Trade Mark Regulation. (6) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services.” 13.