Trade Marks Inter Partes Decision O/616/20
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O/616/20 TRADE MARKS ACT 1994 IN THE MATTER OF TRADE MARK APPLICATION NO. 3263343 BY MACKENZIE FLY FISHING LIMITED TO REGISTER (SERIES OF TWO) AS TRADE MARKS IN CLASSES 25 AND 28 AND OPPOSITION THERETO UNDER NO. 412264 BY FOX INTERNATIONAL GROUP LIMITED Background and Pleadings 1. Mackenzie Fly Fishing Limited (“the applicant”) applied for the trade marks set out on the title page as a series of two marks on 13 October 2017. The marks were published in the Trade Marks Journal on 26 January 2018 and registration is sought for the following goods: Class 25: Clothing; headgear; footwear; fishing smocks; fishing vests; fishing jackets; fishing boots; fishing waders. Class 28: Sporting articles for use in fishing; fishing equipment; fishing tackle; fishing creels; fishing floats; fishing hooks; fishing gaffs; fishing lines; fishing reels; fishing rods; fishing spinners; fishing weights; fishing poles; lures for fishing; floats for fishing; hooks for fishing; artificial fishing bait; artificial fishing worms; bags for fishing; bite indicators for fishing; freeze-dried fishing bait; bite sensors for fishing. 2. On 20 April 2018, Fox International Group Limited (“the opponent”) opposed the application. The grounds were initially based upon Sections 5(2)(a) and (b) of the Trade Marks Act 1994 (“the Act”) and the opponent initially relied on its earlier European Union Trade Mark (EUTM) 14278501 for the mark shown below which has a filing date of 18 June 2015 and a registration date of 15 January 2017: 3. At the time when the notice of opposition was filed, the mark was registered for goods in classes 18, 20 and 28. However, on 12 February 2019, the applicant informed the Tribunal that the opponent’s earlier EUTM14278501 was subject to an application for a declaration of invalidity before the EUIPO. The proceedings were consequently suspended until the outcome of the invalidity could be known. Page 2 of 24 4. On 1 November 2019, the opponent informed the Tribunal that 1) the invalidity proceedings against the earlier EUTM14278501 were concluded; 2) the class 28 specification had been deleted from the earlier EUTM14278501; 3) the opponent had requested a partial conversion of the earlier EUTM14278501 into a UK mark with the goods to be converted being limited to class 28 only and 4) it was the opponent’s understanding that the UK mark resulting from the conversion “stands as part of the mark relied upon in [these proceedings]”. 5. On 12 December 2019, the Tribunal responded by saying that the opponent had until 27 December 2019 to file an amended notice of opposition (Form TM7) to include the converted UK mark as the basis of the opposition. That was duly done, and the opponent filed an amended Form TM7 on 14 December 2019, no longer relying on its earlier EUTM14278501, but instead relying on trade mark application no. UK00003437283 which resulted from the conversion of the earlier EUTM14278501 into a UK right. The claim under Section 5(2)(a) was also dropped with the opposition being now limited to Section 5(2)(b) only. 6. The applicant did not object to the conversion and filed an amended counterstatement on 23 January 2020 denying the claims. 7. The opposition proceedings were suspended until the end of the opposition period for the registration of the opponent’s converted trade mark application. This completed its registration process on 7 August 2020. On 10 September 2020, the Tribunal wrote to the parties informing them that the UK00003437283 mark was registered and that the case would proceed to a hearing as per the applicant’s request. 8. Neither party filed evidence in these proceedings, although the opponent filed submissions on 5 September 2018, prior to the filing of the amended Form TM7. A hearing took place via video link on 15 October 2020; the opponent was represented by David Crouch of Broomhead Johnson and the applicant by Peter Cornford of Stevens Hewlett & Perkins. Page 3 of 24 DECISION 9. 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”. 10. The UK00003437283 mark resulting from the conversion of the opponent’s earlier EUTM14278501 enjoys, in respect of the UK, the same date of filing of the earlier EUTM14278501, i.e. 18 June 2015 and, as such, it qualifies as an earlier mark under the provision of Section 6 of the Act. As this earlier trade mark had not been registered for more than five years at the publication date of the mark in issue, it is not subject to the proof of use provisions. Section 5(2) – case law 11. The following principles are gleaned from the decisions of the EU courts 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. (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 Page 4 of 24 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 impression created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex 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 greater 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 to mind the earlier mark, 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; Page 5 of 24 (k) if the association between the marks creates a risk that the public will wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion. Comparison of goods 12. In the judgment of the Court of Justice of the European Union (CJEU) in Canon, Case C-39/97, the court stated at paragraph 23 that: “In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.” 13. The relevant factors identified by Jacob J. (as he then was) in the Treat case, [1996] R.P.C. 281, for assessing similarity were: (a) The respective uses of the respective goods or services; (b) The respective users of the respective goods or services; (c) The physical nature of the goods or acts of service; (d) The respective trade channels through which the goods or services reach the market; (e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be, found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; (f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance Page 6 of 24 whether market research companies, who of course act for industry, put the goods or services in the same or different sectors. 14. In Kurt Hesse v OHIM, Case C-50/15 P, the CJEU stated that complementarity is an autonomous criterion capable of being the sole basis for the existence of similarity between goods.