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; Page 2 of 37 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. Page 3 of 37 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: Page 4 of 37 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 Page 5 of 37 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. Page 6 of 37 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: Page 7 of 37 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.