O/238/21
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3514049 IN THE NAME OF CULTURED UK LTD FOR THE TRADE MARK
IN CLASS 14
AND
OPPOSITION THERETO UNDER NO. OP600001529 BY EMILY HAYES
Background and pleadings
1. Cultured UK Limited (the applicant) applied to register the trade mark
application no. 3514049 for the mark in the UK on 21 July 2020. It was accepted and published in the Trade Marks Journal on 21 August 2020 in respect of the following goods:
Class 14: Jewellery.
2. Emily Hayes (the opponent) opposes the trade mark on the basis of section 5(2)(b) of the Trade Marks Act 1994 (the Act), using the fast track opposition procedure. This is on the basis of her earlier UK trade mark registration no. 3040985 for the mark Scintilla Sunrise, with the registration date of 18 July 2014. The following goods are relied upon in this opposition:
Class 14: Costume jewelry; Jewellery of precious metals; Jewellery cases; boxes; Jewellery boxes of precious metals; Jewellery articles; Jewellery being articles of precious metals; Jewellery being articles of precious stones; Jewellery boxes [fitted]; Jewellery cases [fitted]; Jewellery chain; Jewellery chain of precious metal for anklets; Jewellery chain of precious metal for bracelets; Jewellery chain of precious metal for necklaces; Jewellery coated with precious metal alloys; Jewellery coated with precious metals; Jewellery containing gold; Jewellery fashioned from bronze; Jewellery fashioned from non- precious metals; Jewellery fashioned of cultured pearls; Jewellery fashioned of precious metals; Jewellery fashioned of semi-precious stones; Jewellery for personal adornment; Jewellery for personal wear; Jewellery in non-precious metals; Jewellery in precious metals; Jewellery in semi-precious metals; Jewellery in the form of beads; Jewellery incorporating diamonds; Jewellery incorporating pearls; Jewellery incorporating precious stones; Jewellery items; Jewellery made from gold; Jewellery made from silver; Jewellery made of bronze;
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Jewellery made of crystal; Jewellery made of crystal coated with precious metals; Jewellery made of glass; Jewellery made of non- precious metal; Jewellery made of plastics; Jewellery made of plated precious metals; Jewellery made of precious metals; Jewellery made of precious stones; Jewellery made of semi-precious materials; Jewellery ornaments; Jewellery products; Jewellery rope chain for anklets; Jewellery rope chain for bracelets; Jewellery rope chain for necklaces; Jewellery stones.
3. The opponent argues that the respective goods are identical and that the marks are highly similar. The opponent argues that the dominant and distinctive element of the application is the word SCINTILLA and that this element is included in full in the earlier mark. The opponent submits that SCINTILLA is the first element of the earlier mark, and that it is here that the consumer will pay most attention. Further, the opponent argues that on the basis of the similarity between the marks and identity between the goods, there exists a likelihood of confusion. The opponent made a statement of use in relation to all the goods for which its mark is registered.
4. The applicant filed a counterstatement denying the claims made. The applicant claimed that its mark is distinct from the opponent’s mark, and that the products sold differ. The applicant states it is a pearl specialist whilst the opponent sells craft jewellery, and that it sells its goods via different online trade channels to the opponent. The applicant states that it has used the mark since 2014 and has built a strong reputation under the same, and that the parties have coexisted on the marketplace with no conflict or confusion for close to seven years.
5. The applicant’s selected “no” to the question of whether it wishes the opponent to provide proof of use within its Form TM8. The form clearly states that the section completed by the applicant is not relevant within fast track proceedings, and proof of use is required prior to the filing of the applicant’s Form TM8 in the same. For this reason, proof of use will be considered as if this section of the form had been left blank by the applicant.
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6. Rule 6 of the Trade Marks (Fast Track Opposition)(Amendment) Rules 2013, S.I. 2013 2235, disapplies paragraphs 1-3 of Rule 20 of the Trade Mark Rules 2008, but provides that Rule 20(4) shall continue to apply. Rule 20(4) states that:
“(4) The registrar may, at any time, give leave to either party to file evidence upon such terms as the registrar thinks fit.”
7. The net effect of these changes is to require parties to seek leave in order to file evidence in fast track oppositions. This applies with the exception of proof of use evidence, applicable in instances where the earlier registration relied upon was over five years old at the relevant date, namely the filing date or priority date of the application. The opponent filed proof of use evidence with its Form TM7F as required.
8. The applicant filed a request seeking leave to file evidence of its earlier use in these proceedings on 21 December 2020. The request to file evidence was considered and refused by the Tribunal by way of letter dated 25 January 2021. The letter read as follows:
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9. No hearing was requested to challenge the preliminary view issued, and the applicant’s evidence was not admitted into these proceedings.
10. Rule 62(5) (as amended) states that arguments in fast track proceedings shall be heard orally only if (i) the Office requests it or (ii) either party to the proceedings requests it and the registrar considers that oral proceedings are necessary to deal with the case justly and at proportionate cost; otherwise, written arguments will be taken. A hearing was neither requested nor considered necessary. Only the opponent filed written submissions in these proceedings, which will not be summarised but will be considered and referred to as and where appropriate during this decision. This decision is taken following a careful perusal of the papers.
11. Although the UK has left the EU, section 6(3)(a) of the European (Withdrawal) Act 2018 requires tribunals to apply EU-derived national law in accordance with EU law as it stood at the end of the transition period. The provisions of
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the Trade Marks Act relied on in these proceedings are derived from an EU Directive. This is why this decision continues to make reference to the trade mark case law of EU courts.
Evidence
12. As mentioned above, the opponent filed evidence of use with its Form TM7F, as is required during fast track opposition proceedings. The evidence provided consists of 17 exhibits, namely Exhibit 1 to Exhibit 17. In addition to the exhibits, the following figures have been provided in respect of sales under the mark for the years 2016 to 2020:
Year Amount 2016 £71 2017 £378 2018 £1,985 2019 £4,917 2020 £16,025
Exhibit 1
13. Exhibit 1 consists of invoices for sales between 17 February 2016 and 5 July 2020, and are spread out throughout that time. The invoices display the mark “ScintillaSunrise” under the heading “Shop” on each of the invoices shown, and they detail the item sold complete with an image and display the price. The vast majority (44 out of 46) of the invoices provided show delivery addresses in the UK. One invoice shows a delivery address of the Netherlands, and one shows this as Greece. The invoices refer primarily to the sale of a variety of earrings and nose jewellery. In addition, the UK invoices show sales of 4 necklaces, one bracelet and one ring. These items feature on invoices dated between 15 February 2016 and 5 May 2018. Many of the items to the UK specify they are made from sterling silver.
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Exhibit 2
14. Exhibit 2 consists of screen shots from the “stats” section of the webpage “etsy.com”, displaying a graph detailing the total revenue between 2016 to 2020 as £23,279.04, and identifying this was from 1,572 orders, and that there had been 65.2 thousand site visits. The mark itself is not shown on the page, but the opponent’s name is logged in the corner. The graph shows the biggest increase in sales took place during 2020. The screen shot is repeated several times, each varying slightly to show the sales that took place each year, as outlined in the table above.
Exhibit 3
15. Exhibit 3 shows screenshots from a Facebook page showing images of packaging on 15 October 2017. The exhibit states that all packaging used in 2017 was as below:
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Exhibits 4 and 5
16. The above exhibits show further dated images from Facebook of the packaging used in 20181 and 20192. These were as below:
2018 2019
Exhibit 6
17. Exhibit 6 shows a registration email from ‘[email protected]’ showing the registration of scintillasunrise.co.uk dated 10 February 2014.
Exhibit 7
18. Exhibit 7 shows an email from [email protected] stating that ‘Scintilla Sunrise’ shop was live on ‘Zilla’.
Exhibit 8
19. Exhibit 8 is an email from [email protected] confirming a change of user ID to scintillasunriseshop, dated 5 February 2014.
Exhibit 9
1 Exhibit 4, post dated 2 July 2018 2 Exhibit 5, post dated 18 April 2019 Page 8 of 37
20. Exhibit 9 is an email confirming a free place at a wedding fair from ‘Zilla’.
Exhibit 10
21. Exhibit 10 is a screen shot of a post under the Scintilla Sunrise Facebook account dated 1 November 2016, confirming dates of “Christmas fairs” that would be attended on 11th, 19th and 26th November and 3rd and 10th December. Above the post are images of jewellery.
Exhibit 11
22. Exhibit 11 is a twitter post shared on Facebook about Jacqueline Gold’s “WOW” competition won by Scintilla Sunrise, as well as a comment regarding Scintilla Sunrise’s 200th sale. The Facebook share is dated 28 November 2018.
Exhibit 12
23. This exhibit consists of an article from The Sandy & Biggleswade Bulletin about the competition above, referring to the “online jewellery company Scintilla Sunrise” as a winner, as shared on the Scintilla Sunrise Facebook page on 3 April 2018.
Exhibit 13
24. This exhibit is described by the opponent as “Publicity for the brand as winners of the SmartSocial ‘Queen of’ competition”. The exhibit shows a logo stating ‘Queen of Sentimental Jewellery’, as well as a ‘#SmartSocial Winner’ logo including the wording ‘@ScintillaSun’ and showing a date of 28 August 2016. The logos were shared by the Scintilla Sunrise Facebook page on 2 September 2016.
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Exhibit 14
25. This exhibit shows Scintilla Sunrise tagged as the provider of jewellery on social media posts by ‘SuRie’ at the ‘PinkNews Awards’ dated 19 October 2018, at a night for ‘Attitude Magazine’ on 12 October 2018, and at an event at Bishopsgate Institute Great Hall on 25 February 2019.
Exhibit 15
26. This exhibit shows ‘Scintilla Sunrise’ credited as ‘Costume and Wardrobe Department’ for the film ‘Quoggers’ dated 2020.
Exhibit 16
27. This exhibit shows the Twitter page of Scintilla Sunrise, showing images of
jewellery and the mark and .
Exhibit 17
28. This exhibit is labelled ‘Scintilla Sunrise pieces available to buy as at 23/11/20 1/11’. The exhibit itself shows jewellery, namely earrings, nose studs and nose rings with prices shown in GBP. The mark is not shown on the exhibit itself.
Preliminary issues
29. As mentioned previously, the applicant requested to file evidence of its earlier use of its mark within these proceedings. This request was denied for the reasons outlined in the letter sent by the Tribunal on 25 January 2021, as
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detailed. The letter referenced Tribunal Practice Notice 4/2009, explaining the position in respect of claiming the earlier use of a trade mark as a defence within opposition proceedings based on section 5(1) or section 5(2). Whilst I note that no evidence has been admitted into the proceedings, I do note that the applicant continues to rely upon an argument of earlier use and coexistence within its amended Form TM8. I will not repeat the reasoning set out in the letter of 25 January 2021 with regards to the earlier use, but I will briefly address the applicant’s arguments regarding the coexistence. The applicant states:
“We are not a new brand entering the market, where doubt about potential confusion with the opposing mark may arise, we have operated for close to 7 years without a single instance of any confusion between the two brands, and indeed we were both unaware of the others existence until we made this application”.
30. Whilst I have no evidence of this use to consider, I note this is due to the rejection by the Tribunal to the applicant’s request to file this evidence. However, it is my view that even if this evidence were to have been admitted into proceedings, I would not find this argument persuasive. A lack of evidence of actual confusion in the market is not determinative of a lack of a likelihood of confusion in any case,3 and in this case it is particularly clear that even if the parties have been able to avoid confusion to date, this does not necessarily mean that there is no likelihood of confusion between the marks. The applicant’s arguments of earlier use and coexistence with the opponent will therefore not be further considered within this decision in this instance. I note also the discrepancies between the use in the name of Scintilla Fine Jewellery Limited as claimed by the applicant, and application being made in the name of Cultured UK Ltd as is highlighted by the opponent, but this is not something that requires my additional attention for the reasons outlined.
3 Roger Maier and Another v ASOS, [2015] EWCA Civ 220 Page 11 of 37
Proof of use
Relevant statutory provision: Section 6A:
31. “(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
(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.
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(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 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.”
Proof of Use Case Law
32. In Walton International Ltd & Anor v Verweij Fashion BV [2018] EWHC 1608 (Ch) Arnold J summarised the law relating to genuine use as follows:
“114……The CJEU has considered what amounts to “genuine use” of a trade mark in a series of cases: Case C-40/01 Ansul BV v Ajax Page 13 of 37
Brandbeveiliging BV [2003] ECR I-2439, La Mer (cited above), Case C-416/04 P Sunrider Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-4237, Case C-442/07 Verein Radetsky-Order v Bundervsvereinigung Kamaradschaft ‘Feldmarschall Radetsky’ [2008] ECR I-9223, Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-2759, Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV [EU:C:2012:816], [2013] ETMR 16, Case C-609/11 P Centrotherm Systemtechnik GmbH v Centrotherm Clean Solutions GmbH & Co KG [EU:C:2013:592], [2014] ETMR, Case C-141/13 P Reber Holding & Co KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:2089] and Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU:C:2017:434], [2017] Bus LR 1795.
115. The principles established by these cases may be summarised as follows:
(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at [35] and [37].
(2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: Ansul at [36]; Sunrider at [70]; Verein at [13]; Leno at [29]; Centrotherm at [71]; Reber at [29].
(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: Ansul at [36]; Sunrider at [70]; Verein at [13]; Silberquelle at [17]; Leno at [29]; Centrotherm at [71]. Accordingly, affixing of a trade mark on goods as a label of quality is not genuine use unless it guarantees, additionally and Page 14 of 37
simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality: Gözze at [43]-[51].
(4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal use by the proprietor does not suffice: Ansul at [37]; Verein at [14] and [22]. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at [20]-[21]. But use by a non-profit making association can constitute genuine use: Verein at [16]-[23].
(5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark: Ansul at [37]-[38]; Verein at [14]; Silberquelle at [18]; Centrotherm at [71]; Reber at [29].
(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: Ansul at [38] and [39]; La Mer at [22]-[23]; Sunrider at [70]-[71], [76]; Leno at [29]-[30], [56]; Centrotherm at [72]-[76]; Reber at [29], [32]-[34].
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(7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: Ansul at [39]; La Mer at [21], [24] and [25]; Sunrider at [72] and [76]-[77]; Leno at [55].
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: Reber at [32].”
33. Section 100 of the Act states that:
“100. If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.”
34. In these proceedings the burden is on the opponent to evidence that the mark has been put to genuine use, within the relevant territory of the UK, in respect of the goods as registered, and within the relevant timeframe of 22 July 2015 - 21 July 2020.
Form of the Mark
35. The applicant’s evidence shows the use of the mark, namely SCINTILLA SUNRISE as a plain word mark, in a standard font, and in the forms below:
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36. Where the mark is used in word format, this is clearly use of the mark as registered. It is established that a word mark may be used in a variety of fonts and colours, as well as in upper and lower case lettering.
37. In respect of the use of the mark with the additional hand and diamond device element, in Colloseum Holdings AG v Levi Strauss & Co., Case C-12/12, which concerned the use of one mark with, or as part of, another mark, the Court of Justice of the European Union (“CJEU”) found that:
“31. It is true that the ‘use’ through which a sign acquires a distinctive character under Article 7(3) of Regulation No 40/94 relates to the period before its registration as a trade mark, whereas ‘genuine use’, within the meaning of Article 15(1) of that regulation, relates to a five-year period following registration and, accordingly, ‘use’ within the meaning of Article 7(3) for the purpose of registration may not be relied on as such to establish ‘use’ within the meaning of Article 15(1) for the purpose of preserving the rights of the proprietor of the registered trade mark.
32. Nevertheless, as is apparent from paragraphs 27 to 30 of the judgment in Nestlé, the ‘use’ of a mark, in its literal sense, generally encompasses both its independent use and its use as part of another mark taken as a whole or in conjunction with that other mark.
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33. As the German and United Kingdom Governments pointed out at the hearing before the Court, the criterion of use, which continues to be fundamental, cannot be assessed in the light of different considerations according to whether the issue to be decided is whether use is capable of giving rise to rights relating to a mark or of ensuring that such rights are preserved. If it is possible to acquire trade mark protection for a sign through a specific use made of the sign, that same form of use must also be capable of ensuring that such protection is preserved.
34. Therefore, the requirements that apply to verification of the genuine use of a mark, within the meaning of Article 15(1) of Regulation No 40/94, are analogous to those concerning the acquisition by a sign of distinctive character through use for the purpose of its registration, within the meaning of Article 7(3) of the regulation.
35 Nevertheless, as pointed out by the German Government, the United Kingdom Government and the European Commission, a registered trade mark that is used only as part of a composite mark or in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1)”. (emphasis added)
38. It is my view that the word mark clearly plays an independent role in the hand and diamond mark, and that it continues to designate the origin of the goods under the mark to the consumer. I therefore find the use of the mark in this sign to be acceptable use of the mark as registered, in line with Colloseum.
39. The use of the mark in the scrolled text is partially obscured in the image provided, and I am unable to determine how the ‘i’ is dotted, and how the mark ends. I do not find the image as provided to be sufficient to determine that this use is an acceptable variant of the word mark as registered.
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Use of the Mark
40. The evidence filed by the opponent at Exhibit 1 clearly shows use of the mark SCINTILLA SUNRISE in respect of an Etsy shop selling jewellery. The invoices provided show that the majority of the items sold are earrings and nose jewellery, and that the sale of other types of jewellery play a much smaller part in the overall business. The invoices showed in the vast majority of cases that these sales were made to the UK, and also that the sales were made within the relevant timeframe for proving use of the mark. Whilst the invoices themselves do not reference the use of the mark in relation to the products (rather than simply as the ‘shop’), no other mark is used on the invoice in relation to the goods, and so it appears that the goods themselves, rather than just the retail services, are offered under the mark. This is reinforced by the product packaging provided, particularly the images provided for 2018 & 2019 at Exhibits 4 & 5, which clearly show that the mark, or an acceptable variant of such, was used in relation to the goods themselves during this time. I find for at least the second half of the period of 2018 and the first part 2019 the mark was in use in an acceptable form on the packaging of the goods.
Genuine use
41. Whilst it is clear that some use of the mark has been made in the UK, in respect of the relevant timeframe and in respect of the goods as registered, I must now consider whether the use made constitutes genuine use. From the figures provided, I find that the sales under the mark have been relatively small. Whilst the figures for 2020 are more significant, it is not clear what portion of these sales will fall within the relevant timeframe for proving use, namely up until 21 July 2020. However, I find it reasonable to assume that at least a portion of these sales will fall into that timeframe. I do note from the invoices however, that the value of the goods sold is relatively low, with most sales falling between £5-£20, meaning higher sales volumes are required to reach the figures provided.
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42. From the sum of the evidence provided, it is my view that the use made of the mark is not token, merely for the purpose of preserving the registration for the mark, in respect of any of the goods shown. It is of course not always the case that the every instance of proven commercial use will be deemed as genuine use. Whilst I have no evidence of the size of the jewellery market in the UK, it appears highly unlikely that the opponent holds more than only a very small fraction of the market itself. However, I consider also that there is no de minimus rule in respect of the use of a mark.
43. I have not been provided with a breakdown of the sales of each type of jewellery under the mark, and so it is hard to attribute a particular portion of the figures provided to each of the goods shown. However, I find that the evidence in relation to the use of the mark in respect of ear and nose jewellery is the most convincing. It is my view that the sustained and increasing use by the opponent of its mark in respect of its ear and nose jewellery, at least in respect of the years 2018 and 2019, with sales appearing to rise until the end of the relevant period, has been made in accordance with the commercial raison d’être of the mark, for the purpose of creating a market share in respect of the goods, and I find there has been genuine use of the mark in respect of these products. In respect of the remaining jewellery items, I find very little evidence has been provided in relation to these, and it is my view that whilst there is no de minimus rule, and whilst I do not believe this to be token use, I cannot find that evidence of the sale of only 4 necklaces, one bracelet and one ring is sufficient to find genuine use in respect of these goods. I acknowledge it is possible that a higher portion of sales may be attributed to these goods than I have found from the invoices provided, however, the lack of evidence on this point means I cannot find on balance that this is likely the case.
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Fair specification
44. The earlier mark is registered in respect of a large number of terms describing types of jewellery and jewellery related items, including the more general terms Jewellery items and Jewellery for personal wear.
45. I must now consider the extent to which I find the opponent’s use of the mark in respect of ear and nose jewellery justifies the enforcement of the earlier mark within these opposition proceedings in relation to the goods covered by the registration.
46. In Euro Gida Sanayi Ve Ticaret Limited v Gima (UK) Limited, BL O/345/10, Mr Geoffrey Hobbs Q.C. as the Appointed Person summed up the law as being:
“In the present state of the law, fair protection is to be achieved by identifying and defining not the particular examples of goods or services for which there has been genuine use but the particular categories of goods or services they should realistically be taken to exemplify. For that purpose the terminology of the resulting specification should accord with the perceptions of the average consumer of the goods or services concerned.”
47. In Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors [2016] EWHC 3103 (Ch), Mr Justice Carr summed up the law relating to partial revocation as follows:
“iii) Where the trade mark proprietor has made genuine use of the mark in respect of some goods or services covered by the general wording of the specification, and not others, it is necessary for the court to arrive at a fair specification in the circumstance, which may require amendment; Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch) (“Thomas Pink”) at [52].
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iv) In cases of partial revocation, pursuant to section 46(5) of the Trade Marks Act 1994, the question is how would the average consumer fairly describe the services in relation to which the trade mark has been used; Thomas Pink at [53].
v) It is not the task of the court to describe the use made by the trade mark proprietor in the narrowest possible terms unless that is what the average consumer would do. For example, in Pan World Brands v Tripp Ltd (Extreme Trade Mark) [2008] RPC 2 it was held that use in relation to holdalls justified a registration for luggage generally; Thomas Pink at [53].
vi) A trade mark proprietor should not be allowed to monopolise the use of a trade mark in relation to a general category of goods or services simply because he has used it in relation to a few. Conversely, a proprietor cannot reasonably be expected to use a mark in relation to all possible variations of the particular goods or services covered by the registration. Maier v Asos Plc [2015] EWCA Civ 220 ("Asos") at [56] and [60].
vii) In some cases, it may be possible to identify subcategories of goods or services within a general term which are capable of being viewed independently. In such cases, use in relation to only one subcategory will not constitute use in relation to all other subcategories. On the other hand, protection must not be cut down to those precise goods or services in relation to which the mark has been used. This would be to strip the proprietor of protection for all goods or services which the average consumer would consider to belong to the same group or category as those for which the mark has been used and which are not in substance different from them; Mundipharma AG v OHIM (Case T-256/04) ECR II-449; EU:T:2007:46.”
48. I note that whilst jewellery is not an overly broad category of goods, it is capable of being broken down further. For example, it may be broken down by Page 22 of 37
where the items may be worn (ear jewellery, body jewellery, ankle jewellery), or into the type of jewellery items, such as rings, necklaces, bracelets, earrings, studs etc. I must consider, therefore, if I find it appropriate to limit the protection held by the opponent’s mark to ear jewellery and nose jewellery, or indeed, further to earrings, ear studs and nose rings for example. I have considered the case law above, and what I believe the average consumer would consider a fair description of the goods offered by the opponent. It is my view in this case, that jewellery alone would be considered a fair description of the goods offered by the opponent, and that it is unlikely this would be broken down into the specific type by the average consumer. As the opponent’s specification does not include the wording jewellery per se, I find the description jewellery items to be a fair specification in this instance. I note the applicant describes the opponent as “craft jewellery specialists”, but it is my view that the average consumer would not believe the opponent’s specification should be limited to “craft” jewellery only.
49. However, if I am wrong in finding jewellery items to be a fair specification, and alternatively that ear jewellery and nose jewellery would be appropriate in this instance, I note this will not have an impact on the decision I must make, for reasons that are set out in my goods comparison below.
DECISION
Section 5(2)(b)
50. Section 5(2)(b) of the Act is as follows:
“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”. Page 23 of 37
The Principles
51. The following principles are gleaned from the decisions of the CJEU in Sabel BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn- Mayer Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98, Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.
The principles
(a) The likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex
Page 24 of 37 mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;
(f) however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.
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Comparison of goods
52. Section 60A of the Act provides:
“(1) For the purpose of this Act goods and services-
(a) are not to be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification.
(b) are not to be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.
(2) In subsection (1), the ”Nice Classification” means the system of classification under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, which was last amended on 28 September 1975.”
53. In Gérard Meric v Office for Harmonisation in the Internal Market, Case T- 133/05, the General Court (“GC”) stated that:
“29. In addition, the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by trade mark application (Case T-388/00 Institut fur Lernsysteme v OHIM- Educational Services (ELS) [2002] ECR II- 4301, paragraph 53) or where the goods designated by the trade mark application are included in a more general category designated by the earlier mark”.
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54. With these factors in mind, the goods for comparison are below:
Earlier goods (following Contested goods proof of use) Class 14: Jewellery items Class 14: Jewellery
55. It is my view that the goods jewellery and jewellery items are evidently identical. Additionally, if the opponent’s specification were to be limited further to ear jewellery and nose jewellery, I find these are also included within the applicant’s broader term jewellery, and as such the goods remain identical within the meaning of Meric.
Comparison of marks
56. It is clear from Sabel BV v. Puma AG (particularly paragraph 23) that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The same case also explains that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks, bearing in mind their distinctive and dominant components. The CJEU stated at paragraph 34 of its judgment in Case C-591/12P, Bimbo SA v OHIM, that:
“.....it is necessary to ascertain, in each individual case, the overall impression made on the target public by the sign for which registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion.”
57. It would be wrong, therefore, to artificially dissect the trade marks, although, it is necessary to take into account the distinctive and dominant components of the marks and to give due weight to any other features which are not
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negligible and therefore contribute to the overall impressions created by the marks.
58. The respective trade marks are shown below:
Earlier trade mark Contested trade mark
SCINTILLA SUNRISE
59. The earlier mark consists of the two words SCINTILLA and SUNRISE. It is my view that the mark will be recognised as two separate words by the consumer. I find that the word SCINTILLA, being both at the beginning of the mark where the consumer will generally pay most attention4, and being in my view the more unusual word, will play a slightly greater role in the overall impression of the mark than the second element SUNRISE, but I still find that both elements will play a significant role within its overall impression.
60. The contested mark consists of the words SCINTILLA FINE JEWELLERY. SCINTILLA is clearly the largest and most dominant element of the mark and plays the greatest role in its overall impression. I note the mark is filed in a slightly stylised format, and the word SCINTILLA is in what appears to be a purple colour with a shine effect on the ‘N’, but I find these elements play only a small role in overall impression of the mark. The words FINE JEWELLERY are not only significantly smaller and paler than the rest of the mark, but they are entirely descriptive, and I find they play only a very tiny, if any role in the overall impression of the contested mark.
4 El Corte Inglés, SA v OHIM, Cases T-183/02 and T-184/02 Page 28 of 37
Visual comparison
61. Visually, the marks coincide in the use of the 9 letter word SCINTILLA. The earlier mark is filed as a word mark, meaning it may be used in any colour or standard font, and so the use of purple and the very slight stylisation of the word in the contested mark does little to add to the visual differences. However, I do find that the shine effect used in the contested mark would fall outside of fair and notional use of the opponent’s mark. The marks differ visually through the use of the second word SUNRISE in the earlier mark, which makes it appear significantly longer. Although the contested mark includes the wording FINE JEWELLERY, this is stacked below the dominant word SCINTILLA, and this element will likely receive very little, if any attention from the consumer. Considering the points of visual similarity and the differences, I find the marks to be visually similar to between a medium and high degree.
Aural comparison
62. Aurally, I find the earlier mark will be pronounced as the two words SCINTILLA and SUNRISE, comprised of the five syllables SCIN-TILL-A-SUN- RISE. It is my view that the wording FINE JEWELLERY will not be pronounced within the contested mark, meaning it will be pronounced as the three syllable word SCIN-TILL-A only. The marks therefore coincide in the first three syllables and differ in respect of the additional two syllables of “SUNRISE” at the end of the earlier mark. Overall, I find the marks to be aurally similar to between a medium and high degree.
Conceptual comparison
63. Both marks coincide conceptually though the use of the English word SCINTILLA, meaning a minute amount, a hint or a trace.5 It is my view that
5 See Collins Dictionary [https://www.collinsdictionary.com/dictionary/english/scintilla] as accessed 17 March 2021 Page 29 of 37
the meaning of this word would be known by at least a portion of the English speaking consumers in the UK. However, it is my view that use of this word is relatively uncommon, and for a further group of consumers its meaning will not be known or registered. In both instances, I do not find that the sum of the words SCINTILLA and SUNRISE create a new or different meaning when used together. I find the word SUNRISE in the earlier mark to be the element with the strongest conceptual meaning, conveying to the consumer the concept of the sun ascending over the horizon in the morning, which will likely create a clear visual image in the consumers mind. For the group of consumers with an understanding of SCINTILLA, the earlier mark will therefore convey the two concepts of a hint or trace, and a sunrise. For the group without an understanding of SCINTILLA, the earlier mark will convey the concept of a sunrise only.
64. In the contested mark, the wording “fine jewellery” in the later mark is simply descriptive of the goods, conveying that the goods provided are well made jewellery items. Again, for a group of consumers SCINTILLA will convey the meaning of a hint or trace, and for another group there will be no meaning attached to this element.
65. Overall, I find the marks conceptually similar to a low to medium degree where the concept of “SCINTILLA” is understood by the consumer, as although this concept is shared identically, I find it to be the weaker conceptual element of the earlier mark. Where this word is not recognised by the consumer, I find the marks to be conceptually dissimilar.
Average consumer and the purchasing act
66. The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. For the purpose of assessing the likelihood of confusion, it must be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question: Lloyd Schuhfabrik Meyer, Case C-342/97.
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67. In Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc, Poeticgem Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox Limited, [2014] EWHC 439 (Ch), Birss J. described the average consumer in these terms:
“60. The trade mark questions have to be approached from the point of view of the presumed expectations of the average consumer who is reasonably well informed and reasonably circumspect. The parties were agreed that the relevant person is a legal construct and that the test is to be applied objectively by the court from the point of view of that constructed person. The words “average” denotes that the person is typical. The term “average” does not denote some form of numerical mean, mode or median.”
68. Before I can come to a decision on the likelihood of confusion, I must first identify the relevant consumer of the goods, and the level of attention that the goods will receive from that consumer. It is my view that jewellery will be purchased in the most part by members of the general public. I note that jewellery will range in price significantly, and will include items at a very high price point, but I do not find this will mean that a high level of attention will be paid in respect of the whole category of goods. Some items of jewellery, particularly those at a lower price point, may be purchased relatively frequently by the consumer, without a high level of care and attention. However, it is my view that the consumer will still consider at least the aesthetics, and often the quality of the items being purchased, and I find that at least an average level of attention will be paid. I acknowledge there may also be a number of professional consumers purchasing the goods on behalf of a business or a client, and I find that these consumers will likely pay an above average level of attention as a minimum, due to the increased responsibility and liability that will go along with the purchase.
69. It is my view that the jewellery will primarily be purchased visually, either online or in retail stores. I find the aesthetic purpose of the goods means they are unlikely to be purchased without the consumer having first had sight of the Page 31 of 37
products. However, I note there is a possibility that verbal recommendations may play in a part in the decision making process, and so the verbal comparison cannot be completely ignored.
Distinctive character of the earlier trade mark
70. In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97 the CJEU stated that:
“22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 WindsurfingChiemsee v Huber and Attenberger [1999] ECR I-0000, paragraph 49).
23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51).”
71. The earlier mark SCINTILLA SUNRISE is made up of two English words, that I find will at least be understood by a portion of consumers. Whilst I acknowledge the meaning of the word SCINTILLA as a small quantity of Page 32 of 37
something, I find this to be too out of context and removed for it to be either descriptive or allusive of the size or amount of the goods. Instead, I find the word SCINTILLA to be unusual. It is my view that for consumers with an understanding of the meaning of the word, this will hold a slightly above medium level of distinctive character. Where the meaning of the word is not understood by the consumer, I find this element will hold a high degree of inherent distinctive character to the average consumer.
72. I find the word SUNRISE to be neither descriptive nor allusive of the goods, and I find it holds a medium degree of inherent distinctive character.
73. Overall, I find the earlier mark to hold between a slightly above medium and high degree of inherent distinctive character, depending on the consumers understanding of SCINTILLA.
74. Whilst I note the opponent has provided evidence of use of its mark over the past five years, I find the use shown has been relatively low. There is no evidence of how the use interacts with the UK jewellery market as a whole and only very limited evidence of promotional activity, and no evidence of advertising spend has been filed. From the evidence provided, I do not find that the mark’s inherent distinctive character has been enhanced through use.
GLOBAL ASSESSMENT – Conclusions on Likelihood of Confusion.
75. Prior to reaching a decision under Section 5(2)(b), I must first consider all relevant factors, including those as set out within the principles A-K at paragraph 51 of this decision. I must view the likelihood of confusion through the eyes of the average consumer, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them they have kept in their mind. I must consider the level of attention paid by the average consumer, and consider the impact of the visual, aural and conceptual similarities of the marks by reference to the overall impressions created by the marks, bearing in mind
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their distinctive and dominant components. I must consider that the level of distinctive character held in the earlier marks will have an impact on the likelihood of confusion. I must consider that the likelihood of confusion may be increased where the distinctive character held in the earlier mark is high and may be less likely where it is low. I must remember that the distinctive character of the earlier mark may be inherent, but that it may also be increased through use, and that the distinctiveness of the common elements is key.6 I must keep in mind that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa. I must also consider that both the degree of attention paid by the average consumer and how the goods are obtained will have a bearing on how likely the average consumer is to be confused.
76. I consider at this point that there are two types of confusion that I may find. The first type of confusion is direct confusion. This occurs where the average consumer mistakenly confuses one trade mark for another. The second is indirect confusion. This occurs where the average consumer notices the differences between the marks, but due to the similarities between the common elements, they believe that both products derive from the same or economically linked undertakings.7
77. In Duebros Limited v Heirler Cenovis GmbH, BL O/547/17, Mr James Mellor Q.C. (as he then was), as the Appointed Person, stressed that a finding of indirect confusion should not be made merely because the two marks share a common element. In this connection, he pointed out that it is not sufficient that a mark merely calls to mind another mark. This is mere association not indirect confusion.
78. I found the marks were visually and aurally similar to between a medium and high degree, and that they will be conceptually similar to a low to medium
6 See Kurt Geiger v A-List Corporate Limited, BL O-075-13, in which Mr Iain Purvis Q.C. as the Appointed Person pointed out that the level of ‘distinctive character’ is only likely to increase the likelihood of confusion to the extent that it resides in the element(s) of the marks that are identical or similar. 7 L.A. Sugar Limited v Back Beat Inc, BL O/375/10 Page 34 of 37
degree to those consumers with an understanding of the word SCINTILLA, and conceptually dissimilar to those without. I found the goods to be identical. I found the inherent distinctive character of the earlier mark to be either slightly above medium or high, depending on the consumers knowledge of the word SCINTILLA, and I found this element itself to hold between an above medium and high level of distinctive character. I did not find the distinctive character of the earlier mark had been enhanced through use. I found the average consumer of the goods will consist primarily of members of the general public paying an average degree of attention, but that there will also be a portion of professional consumers paying an above average degree of attention as a minimum. I found the goods will be purchased primarily following visual inspection, but I found that aural considerations, whilst of less importance, cannot be completely discounted.
79. With consideration to all the factors above, it is my view that the consumer will not mistake one mark for the other, even when only an average degree of attention is paid. I find that the visual and aural differences, particularly the addition of the extra word SUNRISE in the earlier mark will not be forgotten by the consumer, particularly as this element will convey a strong conceptual meaning helping it to stick in the consumer’s mind. I therefore find no likelihood of direct confusion between the marks, regardless of the consumers’ understanding of the meaning of SCINTILLA.
80. In respect of indirect confusion, I must consider if I find the use of a common element, namely SCINTILLA, will be enough to confuse consumers into thinking that the marks derive from a common undertaking. I consider firstly the position where consumers understand SCINTILLA to be an English word and are aware of its meaning. In this scenario, I found the word SCINTILLA to be distinctive to a slightly above medium degree, and I found the marks to be conceptually similar to a low to medium degree. I found that the element SCINTILLA plays the greatest role in the overall impression of each mark. I also find that this element plays an independent distinctive role in both the earlier mark and the later mark, and that it does not naturally hang together to create a new meaning with SUNRISE, although I note this is not determinative Page 35 of 37
of a likelihood of confusion between the marks.8 However, in this instance, it is my view that the use of SCINTILLA in both marks will be viewed as an indication that the marks derive from the same commercial origin in respect of the identical goods. I find the consumer may easily assume that the use of SUNRISE was an indicator of a sub brand of applicant’s SCINTILLA mark,9 indicating a particular collection offered under the brand, possibly, but not necessarily, designed with sunrise in mind. It is my view that use of sub brands in relation to various collections is not uncommon in respect of jewellery. I therefore find a likelihood of indirect confusion where the element SCINTILLA is understood as an English word by the consumer.
81. I have considered also the impact that not knowing the meaning of SCINTILLA would have on the consumer. I have found that where the meaning is not known, SCINTILLA will appear highly distinctive, but that the marks will be conceptually dissimilar. With consideration to all the relevant factors, it is my view that the use of the element SCINTILLA will also be viewed in this scenario as an indicator that the marks derive from the same economic undertaking. Whilst it is my view that the consumers will remember the conceptual differences in the mark through the use of SUNRISE, I find they will view the use of SCINTILLA in both marks as more than a coincidence, and that this use of the highly distinctive element will lead to indirect confusion between the two marks.
Final Remarks
82. The opposition is successful in its entirety, and the application will be refused in full.
COSTS
8 Whyte and Mackay Ltd v Origin Wine UK Ltd and Another [2015] EWHC 1271 9 See case C-12/12 Colloseum, regarding “wrong way round confusion”, referring to Comic Enterprises v Twentieth Century Fox [2016] EWCA 41 at §§75-84. In that case Kitchin LJ explained at §80: 80. …whether a particular instance of confusion is “right way round” or “wrong way round” may be a consequence of nothing more meaningful than the order in which the consumer happened to come across the mark and the sign. Further, in both cases the consumer thinks that the goods or services in issue come from the same undertaking or economically linked undertakings, and they may be equally damaging to the distinctiveness and functions of the mark. Page 36 of 37
83. The opponent has been successful and is entitled to a contribution towards its costs. In fast track proceedings, the maximum cost award is capped at £500. The opponent has completed a pro forma, indicating the time spent preparing its case. I find it appropriate to award costs using the hourly rate of £19 per hour, in accordance with the Litigants in Person (Costs and Expenses) Act 1975. In the circumstances I award the opponent the sum of £223.50 as a contribution towards the cost of the proceedings. The sum is calculated as follows:
Calculation Amount Official fee - £100 Preparing and £19 x 5hr £95 filing the notice of opposition and considering the counterstatement Preparing and £19 x 1.5hr £28.5 filing the written submissions Total £223.50
84. I therefore order Cultured UK Limited to pay Emily Hayes the sum of £223.50. The above sum should be paid within twenty-one days of the expiry of the appeal period or, if there is an appeal, within twenty-one days of the conclusion of the appeal proceedings.
Dated this 6th day of April 2021
Rosie Le Breton For the Registrar
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