Differences between graphic elements sufficient to distinguish between marks

Despite the verbal elements of marks being near-identical, the distinction between their visual components meant that consumers could reasonably distinguish between them

10 June 2022

The High Court upheld the decision of the UK Intellectual Property Office (the 'UKIPO') in relation to a trade mark opposition based on unregistered rights and passing off, involving trade marks associated with the retail sale of wine, and sommelier services. The case highlighted that despite the verbal elements of the marks being near-identical, the distinction between their visual components meant that consumers could reasonably distinguish between them.

Background

On the 26th September 2019, Benedict Johnson (the 'Respondent') applied to register a figurative trade mark incorporating the word ‘Winesapp’ in Class 43 (Sommelier Services). This was opposed by Wineapp Limited (the 'Appellant') on 4th December 2019 under Section 5(4)(a) of the Trade Marks Act 1994 (the 'TMA'), on the grounds that the Appellant was in a position to prevent use of the Respondent’s mark under the law of passing off. The Appellant relied on rights in an unregistered mark which they had used in the course of trade since November 2018.

In the opposition decision (O-395-21) the UKIPO Hearing Officer (the 'Hearing Officer') applied the three-step test for establishing a claim of passing off, as laid out in Discount Outlet v Feel Good UK [2017], and concluded that:


1. a small, but not trivial, amount of goodwill had been established by the Appellant;
2. despite the verbal elements of the marks being ‘virtually identical’, no misrepresentation had occurred due to the fact that consumers would be able to distinguish between the marks due to the significant difference in their imagery; and
3. as no misrepresentation had occurred, there could be no damage.

The Hearing Officer focused on the fact that the combination of the words ‘Wine’ and ‘App’ in both marks clearly refer to an app which provides for the retail sale of wine or services in relation to wine, meaning consumers would 'be inclined to see the shared word element as a coincidental use of descriptive language…and would rely on the device elements of the respective marks to distinguish between one wine app provider and another'.

Appeal

The Appellant subsequently appealed this decision to the High Court under a number of grounds, including that:

1. the Hearing Officer had incorrectly assessed the goodwill the Appellant had established (estimating it as ‘small’ when in fact it was significant) and did not sufficiently consider the £137,117 spent on advertising or the 2,780,000 individuals it was said the advertisements had reached; and

2. the Hearing Officer had erred in their assessment of misrepresentation through the dismissal of the verbal elements of both marks.

Decision of the High Court

In its judgment, The High Court upheld the decision of the Hearing Officer noting that, in respect of each ground of appeal, there had been no error of principle and the Hearing Officer had simply undertaken a valid assessment of the evidence as they were entitled to do. In particular, the High Court noted that the Hearing Officer had correctly applied the principles in relation to misrepresentation, stating that Hearing Officer had validly concluded that 'the distinctiveness of the non-verbal devices in the marks was sufficient to achieve the required distinctiveness between the two marks, notwithstanding the virtually identical verbal elements'.

Comment

The High Court’s affirmation of the UKIPO decision confirms that despite there being very high levels of similarity between the word elements of figurative or stylised trade marks, if those word elements are generic, descriptive and/or non-distinctive in relation to the relevant goods or services, the visual components that accompany (and may in fact distinguish) the marks are likely to be paramount when assessing level of similarity, likelihood of deception, misrepresentation, and therefore damage, in an opposition based on passing off grounds.

This article was written by Jeremy Dickerson and Annabel Hanratty and was first published in WTR Weekly, part of the World Trademark Review, in April 2022.

For more information or if you have any questions, please contact Jeremy Dickerson or Annabel Hanratty or your usual IP team contact.

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Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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