Scottish Court of Session Decisions

OUTER HOUSE, COURT OF SESSION

[2017] CSOH 100

XA135/16

OPINION OF LADY WOLFFE

In the appeal under section 76 of the Trade Marks Act 1994 of

CCHG LIMITED t/a Vaporized

Appellant and Registered Proprietor

against

VAPOURIZ LIMITED

Respondent and Applicant

Appellant and Registered Proprietor:  Pickard;  MacRoberts LLP

Respondent and Applicant:  Tariq;  Burness Paull LLP

12 July 2017

Introduction

[1]        This is an appeal against the decision of a hearing officer (“the HO”) of the Registrar of Trade Marks (“the Registrar”), dated 1 November 2016 (the “Decision”), that the appellant’s UK Trade Mark No 3085823 (“the appellant’s TM”) was invalid.  That Decision followed on the respondent’s application to the Registrar, on 30 June 2015, to have the appellant’s TM declared invalid under the provisions of sections 5(2)(b) and 47(2)(a) of the Trade Marks Act 1994 (“the TMA 1994”).  The application was filed on the basis that the appellant’s TM was confusingly similar to the respondent’s trade mark (Trade Mark No: 2605137) (“the respondent’s TM”) which had been registered earlier.  Accordingly, in the Decision the appellant was referred to as the “Registered Proprietor” and the respondent was referred to as “the Applicant”.

 

Background

[2]        The respondent’s TM was applied for on 20 December 2011 and entered into the register on 30 March 2012.  The appellant’s TM was applied for on 12 December 2014 and entered into the register on 13 March 2015. 

[3]        In his Decision, and following contested proceedings, the HO allowed the respondent’s invalidity application.  The HO concluded that the appellant’s TM was invalid because it was similar to the respondent’s TM which was earlier and had been registered in relation to identical goods such that there was a likelihood of confusion between the competing trade marks, contrary to section 5(2)(b) of the TMA 1994.

 

The Two Trade Marks

[4]        The appellant’s TM is registered for “smokeless cigarette vaporizer pipes” in class 34 and is for the following device:

 

 

[5]        The HO’s decision was based on section 5(2)(b) of the TMA 1994, namely that there was a likelihood of confusion between the two trade marks given the identity of goods for which they were registered and the similarity between the marks.  The respondent’s TM is as follows: 

 

 

 
The TMA 1994

[6]        Section 47(2) the TMA 1994 states that the registration of a trade mark can be declared invalid where, among other things, it has been registered in breach of section 5(2)(b).  Section 5(2)(b) states that: 

“5.  Relative grounds for refusal of registration

      (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 of the part of the public, which includes the likelihood of association with the earlier trade mark”

 

The respondent’s TM is the “earlier trade mark” for the purposes of section 5(2)(b).

[7]        It is accepted that the goods and services in respect of which the two trade marks are registered are identical.  The parties join issue, essentially, on whether the two marks are similar and whether there is a likelihood of confusion.

 

The Preliminary Issue: The Nature of this Appeal

[8]        The TMA 1994 does not stipulate the form of appeal from a decision of a hearing officer.  However, rule 55.19(10) of the Rules of the Court of Session (“the RCS”) provides as follows: 

“An appeal under this rule shall be a rehearing and the evidence led on appeal shall be the same as that led before the Comptroller;  and, except with the leave of the court, no further evidence shall be led.”

 

[9]        So far as counsel’s researches have disclosed, this is the first appeal on the merits under the TMA 1994 made to this court.  By contrast, there have been a considerable number of appeals brought before the English courts.  The English procedural rule now applicable, being rule 52.11 of the Civil Procedure Rules (“the CPR”), stipulates that the form of hearing on an appeal is by way of a “review”.  A preliminary issue arises as to the nature of the hearing before this court, and by implication, the scope of the appellate function, and whether the approach in England and Scotland is, or should be, the same. 

 

Questions of Law for the Court

[10]      Once the preliminary issue is resolved, the substantive questions for the court are as follows:-

1.     Did the HO err in his characterisation of the average consumer by:

 

a.   overstating the significance of the aural perception of the marks;  and/or

 

b.   failing to recognise that the average consumer would have been aware of the widespread use of descriptive words such as “vaporised” in relation to electronic cigarettes (“e-cigarettes”)  in the UK?;

 

2.   Did the HO err in law when comparing the marks in issue by:

 

a.   artificially dissecting the device marks into their constituent components;  and/or

 

b.   failing to compare the marks as a whole?

 

3.   Did the HO err in law in his assessment of the likelihood of confusion by:

 

a.   failing to assess the likelihood of confusion by reference to the marks as a whole;

 

b.   giving undue weight to the (erroneous) finding of aural similarity of the marks when the marks were device marks and, accordingly, the most important factor was the visual comparison;  and/or

 

c.   failing to take into account properly, or at all, that the similarity between the marks resided in their non-distinctive elements?

 

4.   In all the circumstances, did the HO err in law, alternatively was he plainly wrong, in allowing the application for a declaration of invalidity against the appellant’s TM?

 

[11]      In the course of her submissions, counsel for the appellant, Ms Pickard, modified question 3(b) by deleting “(erroneous)” and also, in question 4, substituting “principle” for “law”.  For his part, counsel for the respondent, Mr Tariq, took issue with the characterisation of elements as “non-distinctive” in question 3(c).  There was some discussion, too, as to whether the test stated in question 4, whether the HO was “plainly wrong” was itself correct.  I consider this issue below, as part of the preliminary issue. 

 

The Evidence before the HO

[12]      The documentation placed before the HO, and which was the same documentation placed before the court in this appeal, was as follows: 

1.   The respondent’s application to invalidate the UK TM (“Form TM26”);

2.   The appellant’s counterstatement (“Form TM8”), the fifth paragraph stated:  Both marks have to be stylised to render them acceptable as trade marks, as the words Vapour and Vapourise are descriptive in relation to e-cigarettes and vapourising devices...”);

3.   Witness statement of Paul Motion, solicitor at BTO solicitors, who was the then agents for the appellant.  His witness statement dealt with the descriptive nature and widespread use of the words “vapour” and “vaporised”, under reference to the following materials:

(a)  Online dictionary definitions of the words “vaporise” (to change into a vapour) and “vapourize” (Canadian spelling of “vaporize”): 

(b)  List of screenshots showing the UK websites that appellant had found using the terms “vapor”, “vapour” and “vapours”;

(c)  UK websites for e-cigarette companies using the terms “vapour”, “vapours”,  “vapour”,   “vape”,  “vaping”,  “vapourway”,   “vapourite”, “vapourized”, “vapourlicious”,  and

(d) Google searches for “vapor”, “vapour” and “vaporised”

4.   Witness statement of Brett Horth, who is the CEO of the respondent, and which set out details of the respondent’s business.  It also referred to incidents of confusion.  These are recorded at paragraphs 11 and 12 of the Decision;

5.  Written submissions filed on behalf of appellant;

6.  Written submissions filed on behalf of respondent;  and

            7.  Further written submissions on behalf of the appellant.

 

[13]      Save for one issue, concerning the inference the HO drew in respect of the significance of the aural similarities between the word elements of the two trade marks in the context of word-of-mouth or in-store retail purchases, there was no dispute as to the manner in which the HO dealt with the evidence.  He heard no oral evidence or submissions.  He therefore disposed of the application made to him on the papers.  I have had the benefit of oral submissions and, it would appear, a much fuller citation of authorities, comprising some 37 authorities (including three additional ones produced in the course of the two-day hearing).

[14]      The substance of Mr Motion’s evidence concerned what was said to be the widespread use of the word “vapour” (in various forms, spellings and tenses).  From this, Ms Pickard contended that the average consumer of e-cigarettes would have been aware of the widespread use of terms such as “vapour” and “vaporised” (in alternate spellings) in relation to e-cigarettes, and would have been aware of the use of such terms on websites where e-cigarettes were being promoted and sold.  She notes that this point was picked up on in the appellant’s further written submissions, where it was pointed out that the prefix “VAPO” and the word “VAPOUR” and derivatives thereof were very diluted, both on the register and in the marketplace.

[15]      The substance of the respondent’s evidence was in respect of the asserted similarity between the two trade marks and included reference to two instances of confusion reported to, or spoken to, by Mr Horth from a trade customer.  In the written submissions placed before the court it was noted that the appellant had submitted to the HO that this evidence post-dated the relevant date for the assessment of confusion, and in any event, that it did not prove that any consumer had been confused.  While the HO recorded in detail these two instances of confusion, he does not appear to have placed any particular reliance on this evidence in his Decision.  It is not necessary to set out any other passages of the evidence more fully.

 

Agreed Legal Principles

[16]      The parties helpfully produced a joint note of agreed legal principles (“the Agreed Legal Principles”).  They also noted points of difference.  The Agreed Legal Principles, including the points of difference (the latter are underlined), are as follows:

The Preliminary Issue:  the Nature of the Appeal to the Court of Session

 

1.   This appeal is a rehearing and the court is permitted to look at the evidence that was led before the hearing officer. 

 

The respondent placed a further gloss on this principle, in that it contended that:  The difference between a rehearing and a review was one of semantics, and that this court should approach this appeal in the same manner as the English courts would approach an appeal under section 76 of the TMA. 

 

2.   This court may interfere with findings of primary fact where it is shown that there was an error of principle or the HO was [plainly] wrong. 

 

(In terms of the test of “plainly wrong”, in the original form of the Agreed Legal Principles, the word “plainly” was included.  However, for reasons I record below, Miss Pickard sought to delete the word “plainly”.  I address this under the heading “preliminary issue” below.)

 

The respondent also contended that:  Alleged errors that consisted of wrongly assessing similarities between marks, attributing too much or too little discernment to the average consumer or giving too much or too little weight to certain factors in the multi-factorial comparison were not errors of principle. 

 

3.   This court may interfere with the HO’s evaluation of primary facts even in the absence of a distinct and material error of principle.  In deciding whether or not to interfere, this Court should consider that: 

 

a.   the HO had to conduct a multi-factorial comparison, evaluating similarity of marks and other factors in order to reach a conclusion about the likelihood of confusion: 

b.  the HO had experience in the field:  and

c.  the HO did not hear any oral evidence or oral argument. 

 

This court should show a real reluctance, but not the highest degree of reluctance before interfering with the HO’s decision in the absence of a distinct and material error of principle.

 

Substantive Principles

 

4.   A trade mark can be declared invalid where it has been registered in circumstances where: 

 

a.   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:  and

b.   There exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

 

5.   The assessment of the likelihood of confusion must be appreciated globally, taking account of all relevant factors.  In particular: 

 

a.   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. 

b.   The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. 

c.   The assessment of the overall impression of a mark on the average consumer requires an analysis of the components of a sign and of the relevant weight of these components in the perception of the average consumer.  (The respondent’s additional principle.)

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 mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements. 

e.   It is appropriate to examine the objective conditions under which the goods may be present on the market to assess the weight to be given to visual, aural and conceptual similarities of the marks.  (The respondent’s additional principle.)

f.    The overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. 

g.   Beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular 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.

h.   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.  (“the interdependency principle”) (The respondent’s additional terminology.)

i.    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. 

j.    Mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient. 

k.   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. 

l.    If the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.

 

6.   The assessment must be done through the eyes of the “average consumer”, a hypothetical construct who is reasonably well-informed, reasonably observant and reasonably circumspect. 

 

7.   The assessment must take into account all circumstances of use of the mark that are likely to operate in the average consumer’s mind in considering the sign and the impression it is likely to make on him.  (The appellant’s formulation.)

 

The assessment must take into account the manner in which these goods are likely to be selected by the average consumer in the course of trade.  (The respondent’s formulation.)

 

8.   Where a mark is a composite mark, eg comprising both graphic and word elements, it should be compared against the other mark as a whole:  the assessment of similarity between the two marks ought not to be done on the basis of one component of a composite mark alone.

 

Where a mark is a composite mark, it is most likely to be referred to by the average consumer by the word elements.  (The respondent contended for this further principle.)

 

9.   Where a mark is a device mark, it is generally the visual and conceptual elements which are most important to the global assessment of the likelihood of confusion. 

 

10. The extent to which the earlier mark is distinctive is an important factor in the global assessment.

 

11. Where a trade mark is descriptive to some degree, that is a factor that is likely to reduce the likelihood of confusion.

 

12. The fact that the competing trade marks only coincide in relation to a component which has a weak distinctive character does not preclude a likelihood of confusion.  (The respondent contended for this further principle.)

 

 

Submissions on behalf of the Appellant

The Nature of the Assessment Made by the HO

[17]      Ms Pickard explained that the test that the HO had to apply was a multi-factorial one that required him to conduct a global assessment of the likelihood of confusion through the eyes of the average consumer and taking into account all relevant factors as set out in the documentary evidence before him.  In outline, the appellant argued that the HO erred in principle in his approach to the global assessment and this led to a conclusion that was plainly wrong.  In particular, she said, his final analysis rested on the aural similarity between the words “Vaporized” and “Vapouriz”.  It ignored, or placed insufficient weight upon, the fact that (i) those words were essentially descriptive and therefore of little or no trade mark significance to the average consumer of e-cigarettes and (ii) that the marks were device marks, which would be perceived as a whole by the average consumer and, in which, the visual elements were the most dominant and distinctive elements.

The Preliminary Issue

[18]      In respect of the test to be applied by this court in an appeal from a decision of a hearing officer, Ms Pickard began by explaining that appointed persons exercise a parallel jurisdiction to that of an appeal to the High Court in England and the same test fell to be applied.  Since a change in the CPR in 2001, the default position (in the absence of express stipulation in any statutory scheme) is that appeals to the High Court entailed a “review” rather than a rehearing.  As the TMA 1994 is a statute of UK-wide application, it would be undesirable for there to be different tests in the different jurisdictions.  The test in England should be assimilated by the Scottish courts. 

[19]      In terms of characterising the nature of the decision of a hearing officer, she argued that the multi-factorial assessment was not akin to the exercise of a discretion but was more of a bright-line determination, admitting of a right or wrong answer.  An appellate court is less deferential in reviewing that kind of decision than, say, one involving the exercise of a discretion. 

[20]      In E I Dupont de Nemours & Co v S T Dupont [2006] 1 WLR 2793 (“Dupont”) the English Court of Appeal first considered the effect of the change to the CPR as it informed the role of an appellate court in trade mark appeals from the decisions of hearing officers under the TMA 1994.  Ms Pickard referred to the end of paragraph 96 of Dupont for the observation that it would be rare for a rehearing in the full sense to be required.  An appellate court will respect the first instance decision and will interfere only if there is an error in principle. 

[21]      Ms Pickard also referred to the case of TT Education Limited v Pie Corbett Consultancy Limited O-017-17 (“TT Education Limited”), a case decided by Daniel Alexander QC sitting as an appointed person dated 19 January 2017, and which had been omitted from the joint bundle provided by the parties.  Mr Alexander QC was, she explained, a highly experienced practitioner in the field of Intellectual Property.  At paragraphs 16 to 38 in TT Education Limited Mr Alexander QC undertook a very thorough review of the case-law about the appellate function in trade mark appeals.  She noted the reference to the observation in REEF (as quoted with approval by Arnold J in Whyte and MacKay Ltd v Origin Wine UK Ltd & Anr [2015] EWHC 1271 (Ch)), and which is restated as principle 3 (final sentence) of the Agreed Legal Principles.  Ms Pickard emphasised those passages in TT Education Limited (eg at paragraphs 20 to 23, 28, 31 and 35) to the effect that, notwithstanding the expressions of caution or deference, an appellate tribunal will reverse a decision if it believed it to be wrong, albeit that did not extend to reversing a decision simply because an appellate tribunal would have decided it differently.  This was, she said, an important corrective to the perception that the test (derived from REEF) was a high test.  Albeit in a different context, she noted that the Supreme Court in In Re B (A Minor) (Adoption: Natural Parent) [2002] 1 WLR 258 (“Re B”) had dropped “plainly” as a qualifier to “wrong” in the formulation of the test for review by an appellate court: see the reference to Lord Neuberger at paragraph 96 in In re B, as cited in TT Education Limited at paragraph 35. 

[22]      Mr Alexander QC summarised at paragraph 52 of TT Education Limited the principles he derived from his review of the case-law.  Ms Pickard placed particular stress on principle (v) of paragraph 52 of TT Education Limited, which was in the following terms:-

“(v)     Situations where the Registrar’s decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong, (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong.  It is not necessary for the degree of error to be ‘clearly’ or ‘plainly’ wrong to warrant appellate interference but mere doubt about the decision will not suffice.  However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar’s decision was wrong, should the appeal be allowed (Re: B)”

 

In the light of TT Education Limited, she argued for an amendment to the Agreed Legal Principles, as follows:-

(i)         In principle 2 of the Agreed Legal Principles the word “plainly” should be deleted. 

(ii)        She disagreed with the last sentence of principle 2, which Mr Tariq had proffered.  On this point, she argued that it always depended on the facts of each case.  The errors made in the course of a multi-factorial assessment may be additive, with the result that such an assessment may be wrong and, on that basis, reversed by an appellate court.  The form of words that Mr Tariq advanced were derived from Digipos Store Solutions Group Ltd [2006] FSR 42, an earlier case of Mr Alexander QC but from which (in the light of TT Education Limited) he had recanted.

(iii)       She proposed to add to principle 4 of the Agreed Legal Principles, by adding to it either all of the summary principles set out in paragraph 52 of TT Education Limited (except (i)), or, at least, to insert his principle (v), just quoted. 

 

Substantive Law Governing Section 5(2)(b) of the TMA 1994

[23]      Ms Pickard began with a review of the case-law governing section 5(2) of the TMA 1994, including the case-law of the European Court of Justice (“the ECJ”), the General Court (“the GC”), the Court of First Instance of the European Communities (“the CFI”), or the Court of Justice of the European Union (“the CJEU”), as the case may be.  She noted that the TMA 1994 implemented a Community trade mark regulation.  Principle 3 of the Agreed Legal Principles was derived from paragraph 52 of Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd v Asda Stores Ltd [2012] ETMR 17 (CA).  The leading case on confusion was Sabel BV v Puma AG (C-251/95) (ECJ), [1997] ECR I-6191; [1998] RPC 199 (“Sabel”).  This confirmed that confusion was required, not simply that one mark brought the other to mind, and it confirmed that the assessment was a global one.  Further, it may be the case that a mark is not inherently distinctive but has become distinctive through use, such as the “i” in iPad.  However, in the instant case, there was no evidence that the respondent’s TM had required any reputation through use so the assessment all turned on its inherent distinctive features. 

[24]      Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97) (CJEU), [1999] ECR I-3819; [1999] ETMR 690, was authority for the proposition that, for the purpose of the global appreciation, the average consumer was deemed to be reasonably well-informed, reasonably observant and circumspect: see principle 6 of the Agreed Legal Principles.  But that the average consumer would rarely have the chance to make a direct comparison between the marks, and must rely on the imperfect picture he may have of them in his mind: see the peni-penultimate paragraph of the judgment. 

[25]      Ms Pickard also noted that a distinction fell to be drawn between a word mark and a device mark.  In the case of the former, the trade mark protection extended to all forms of the word; in a device mark the protection was limited to the particular form covered by the mark.  The respondent did not have a word mark.  She next turned to the case of Matratzen Concord GmbH v OHIM (Case T-6/01), (CFI), [2003] ETMR 31 “Matratzen”.  That case concerned a complex mark obtained in Spain and which included the word “Matratzen”.  This had no meaning in Spanish but was the German word for “mattresses”.  Ms Pickard relied, in particular, on the observations in paragraphs 33 to 35, 38 and 41 thereof,

“33      Consequently, it must be held that a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark, unless that component forms the dominant element within the overall impression created by the complex mark.  That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it.

 

34     It should be made clear that that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark.  On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole.  However, that does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components.

 

35     With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components.  In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark.

 

[…]

 

38     First of all, it must be observed that, contrary to what is claimed by the applicant, the word ‘Matratzen’ is not descriptive, from the point of view of the relevant public, of the goods covered by the trade mark applied for.  As was pointed out in paragraph 27 above, that public is mainly Spanish-speaking.  The word ‘Matratzen’ has no meaning in Spanish.  It does, admittedly, mean ‘mattresses’ in German and, on the basis of that meaning, it is descriptive of at least some of the goods covered by the trade mark applied for.  However, the file does not contain any evidence that a significant proportion of the relevant public has sufficient knowledge of German to understand that meaning.  Moreover, the word ‘Matratzen’ bears no resemblance to the word for ‘mattress’ in Spanish, namely, ‘colchón’.  Finally, the word ‘Matratzen’ is, admittedly, similar to the English word ‘mattresses’.  However, even if the relevant public does have some knowledge of English, the word ‘mattresses’ is not part of the basic vocabulary of that language and, despite the resemblance between that word and the word ‘Matratzen’, there are also differences between those two words.

 

[…]

 

41     Finally, as far as the figurative sign contained in the trade mark applied for is concerned, it must be held that it is descriptive in relation to the goods covered by that mark.  However, an element of a complex trade mark which is descriptive of the goods covered by that mark cannot, in principle, be considered to be the dominant element of the latter.”

 

From this Ms Pickard drew the propositions that there was the need for a dominant element and if a word part of a mark were descriptive, it could not be dominant.  She also referred to New Look Ltd v OHIM (Joined cases T-117/03 to T-119/03), [2005] ETMR 35 (CFI), in which trade mark registration was sought by another party for “NLJeans”, “NLCollection” and similar in relation to clothing.  The earlier mark in that case had simply been the letters “NL”, also used in relation to clothing.  The CFI held that the distinctiveness in the mark resided solely in the letters “NL” and it observed that descriptive elements of a mark would not be considered by the relevant public as the distinctive or dominant elements of the overall impression conveyed by those marks. 

[26]      In the light of these cases she argued that “vapour” and “vapourise” were descriptive and therefore it was wrong to focus on that as the dominant element of the two marks under consideration.  In response to a question from the court as to what was distinctive in the appellant’s TM (if the word elements “Vapouriz” and “Vaporised” were descriptive and fell to be disregarded), she suggested that it was the ring around the word and the strapline “inhale the freedom”.  The distinctive element of the respondent’s TM was the flame/plume device and the black square background.   

[27]      The principle (that a descriptive word cannot be distinctive) had also been applied in English cases, such as The European Ltd v The Economist Newspaper Ltd [1998] ETMR 307.  In that case the English Court of Appeal refused to find an infringement of the trade mark “THE EUROPEAN” used in conjunction with a dove and globe masthead, by the use of the phrase “European Voice” for a competing newspaper.  ‘European’ was descriptive and as Hobhouse LJ stated:  “Where descriptive words are included in a registered trade mark, the courts have always (and rightly) been exceedingly wary of granting a monopoly of their use.” Ms Pickard also referred to paragraphs 117 and 120 of Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch); [2013] FSR 29 and commended the approach of a comparison of the figurative elements of a complex trade mark where the word element was non-distinctive and descriptive (such as the word “Now” in that case).  In the instant case, the only commonality between the two marks is in the words “vapouriz” or “vaporised”, albeit they were different tenses.  These were purely descriptive and not distinctive, so it was wrong to focus on this element of the two marks.  The HO’s misquote of paragraph 40 of Kurt Geiger Ltd v A-List Corporate Limited BL-075-13 goes to the same point. 

[28]      In the case of Castellani SpA v OHIM (Case T-149/06) (CFI), [2007] ECR II-4755, registration was sought for the device mark that included the word “Castellani” but this was opposed by the proprietor of a mark which included the word “Castelluca”.  The CFI noted the overlap in the first six letters, but it held that different suffixes were sufficient to distinguish the two marks.  Ms Pickard relied on this case as a further illustration of the fact that common words or letters to two marks is not determinative of whether there is confusion.  Finally, in this chapter of her submissions, Ms Pickard referred to the case of JW Spear & Sons Ltd, Mattel Inc and Mattel UK Ltd v Zynga Inc [2015] EWCA Civ 290; [2015] ETMR 27 (“JW Spear”), especially paragraphs 61 and 64 thereof, and in which the English Court of Appeal upheld the challenge by the proprietors of the “SCRABBLE” trade mark (used in conjunction with the well-known letter game) of the use of “SCRAMBLE”.  While the Court of Appeal noted the proposition that the more descriptive a trade mark was the less chance there was of confusion, it rejected the characterisation of the two words as descriptive as it regarded the word “SCRABBLE” as highly distinctive.  Ms Pickard noted the observation, in passing, that that case was not one of two traders who have each chosen a descriptive name and “where small differences may suffice to distinguish” or where there was a less distinctive trade mark.

 

Comments on the Facts before the HO

[29]      Ms Pickard contended that the distinctive elements of the appellant’s TM was the stylised “V” with the circular element, and the stylised “d” at the end of “Vaporised”, together with the strapline and gradation of colour.  The distinctive or dominant elements in the respondent’s TM was the flame/plume device coming out of the letter “o” and the block black background.  She rehearsed in some detail the evidence of Mr Motion to the effect that the words “vape”, “vapour” and so on were all descriptive words in widespread use.  This was not challenged by the respondents.  Like the consumers in the J W Spear and Castellani cases, the average consumers of e-cigarettes would be careful to note the differences between the appellant’s and respondent’s marks.

 

The Errors Made by the HO

[30]      Ms Pickard then turned to consider her three substantive grounds of challenges to the HO’s decision in more detail.  These reflected the three headings used in the grounds of appeal, although I have noted she ultimately departed from the contention that the HO had erred in his finding of a high degree of aural similarity between the two marks. 

 
(i)   Ground of Challenge 1: Characteristics of the Average Consumer and the Purchasing Process

[31]      The first challenge concerned paragraphs 16 to 19 of the HO’s decision.  The heading the HO used for this section of his Decision was “The average consumer and the nature of the purchasing process”.  These paragraphs were in the following terms:

“16.    As the case law above indicates, it is necessary for me to determine who the average consumer is for the respective parties' goods; I must then determine the manner in which these goods are likely to be selected by the average consumer in the course of trade.  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.’

 

In its submissions, the proprietor states

 

‘c) 3...it is relevant to point out that the vaping market in the UK is currently approximately 3 million adults...’

 

17.    Although there is no evidence or submissions on this point, it is my understanding that when both the application for registration and the application for cancellation were filed, the sale and advertising of electronic cigarettes was unregulated.  If my understanding is correct, the average consumer at that time was, in theory, any member of the general public.  I am, however, also aware that the law relating to the sale and advertising of electronic cigarettes has recently changed with, as I understand it, inter alia, the age at which electronic cigarettes may be bought legally raised to 18.  However, as the overwhelming majority of average consumers prior to the change in the law would, in my view, have been over the age of 18 in any case, any change in the law in this regard does not affect my findings.

 

18.    As the evidence shows, the goods at issue may be selected from the pages of a website or catalogue as well as from traditional retail outlets on the high street.  This suggests that visual considerations are likely to form a significant part of the selection process.  That said, as the goods may also be the subject of word-of-mouth recommendations and requests to sales assistants in, for example, retail outlets on the high street, aural considerations will have a not insignificant part to play.

 

19.    As to the degree of care the average consumer will display when selecting the goods at issue, the evidence shows that such goods are sold in a range of styles, strengths and flavours.  Thus it appears to me that the average consumer is likely to pay a reasonably high degree of attention to the selection of the goods at issue.”

 

[32]      In respect of these paragraphs, Ms Pickard argued that the HO fell into two, related, errors in his characterisation of the average consumer.

[33]      First, she argued that the HO erred in finding that aural considerations would have “a not insignificant part to play”.  In fact, there was no evidence before the HO that the goods were the subject of word-of-mouth recommendations or requests to sales assistants in shops.  The HO apparently based himself on Q6 of TM26, but that was not evidence.  In any event, that was a response given in the section of Form TM26 dealing with a separate ground of objection, namely section 5(3) TMA 1994, which was not pursued by the respondent.  She noted that the respondent argues that it was a factor the HO could have regard to as a matter of judicial notice.  But in a field where terms such as “vapour” were used so widely, real care had to be taken before falling back on judicial notice.  It is simply not known how the average consumer would aurally refer to the products of the appellant and the respondent.  Particular care should have been taken here and where the evidence pointed to widespread marketing and sale online.  A website’s visual elements are particularly important in enabling the average consumer to identify the source of products.  The HO had placed undue weight on the aural elements of the marks. 

[34]      Secondly, she argued that this first point fed into the second point taken by the appellant, namely that in his description of the average consumer the HO did not take into account that one of the characteristics of the average consumer would have been his knowledge of the widespread use of terms such as “vapour”.  The HO quoted Birss J in Hearst Holdings Inc v AVELA Inc [2014] EWHC 439 (Ch) at paragraph 16, but he had not mentioned that among the average consumer’s “presumed expectations” was the expectation that many e-cigarettes would be marketed and/or sold by reference to terms such as “vapour”.  That knowledge/expectation would, she argued, have fed into the degree of care with which the average consumer would have proceeded if he was to proceed on the basis of word-of-mouth recommendations or to make requests of shop assistants in retail stores.  That, she argued, is particularly important where, as here, the appellant’s TM was not limited to the word “Vaporized” but included the words “inhale the freedom”.  Had the HO donned the mantle of the average consumer, and that consumer’s knowledge of the word vape, he would have found that the word elements were descriptive and so can never be the dominant element.

[35]      If, having considered all of this, the court remained doubtful and it could identify where the HO had gone wrong, then, following Lord Neuberger in Re B (as quoted in TT Education Limited at para 35), the court should conclude that the HO was wrong. 

 

(ii)  Ground of Challenge 2: Comparison of the trade marks

[36]      Ms Pickard’s second ground of challenge concerned the HO’s comparison of the trade marks.  She took no issue with the HO’s summary of the legal principles to be applied, which he stated thus:

“20.    It is clear from Sabel BV v. Puma AG (particularly paragraph 23) that the average consumer normally perceives a trade 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 trade marks must be assessed by reference to the overall impressions created by the trade marks, bearing in mind their distinctive and dominant components.  The Court of Justice of the European Union ("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.’

 

21.    It would be wrong, therefore, artificially to dissect the trade marks, although, it is necessary to take into account their distinctive and dominant components and to give due weight to any other features which are not negligible and therefore contribute to the overall impressions they convey.  The competing trade marks are as follows:

 

”

 

[37]      Notwithstanding that he had correctly set out the legal principles to be applied, Ms Pickard focused on the errors said to arise from paragraphs 22 to 27 of the HO’s decision.  These paragraphs were in the following terms:

“22.    The applicant's trade mark consists of a number of components.  The first, is a black rectangular device which acts as a background upon which the other components are presented; it has no distinctive character.  The second component is what the proprietor describes as a ‘flame/plume device’.  Presented as it is in green and appearing in the middle of and extending from the top to the bottom of the trade mark (including appearing as a dot in the letter ‘o’ of the word which appears below it), this stylised device of a plume/flame (if indeed that is how it will be construed) will have a high relative weight in the overall impression the trade mark conveys.  As to the component which appears at the bottom of the trade mark, I note the letter ‘i’ has been presented as a device of a cigarette above which appears an ordinary device of a flame.  In my view, the replacement of the letter ‘I’ as a device of a cigarette is likely to go largely unnoticed by the average consumer (it certainly was by the proprietor) and given its size and affinity to the goods at issue, the ordinary device of a flame which appears above the letter ‘i’ is likely to make a very limited (if any) contribution towards the overall impression the trade mark conveys.  Rather, this component will, in my view, be understood by the average consumer as the word ‘Vapouriz’ presented in title case in white/grey.  Considered overall, the stylised device of a plume/flame and what will be understood by the average consumer as the word ‘Vapouriz’ will, in my view, make a roughly equal contribution to the trade mark's distinctiveness and the overall impression it conveys.

 

23.    The proprietor's trade mark also contains a number of components.  In its submissions, the proprietor states:

 

‘3...The most prominent word is the word VAPORIZED, however this is highly stylised, with the V being formed by the silhouettes of two e-cigarette devices, and being surrounded by a circular line.  The D of the word is also highly stylised, to represent a plume of vapour...The other three words in the proprietor's mark cannot simply be ignored...The words "INHALE THE FREEDOM" have a distinctive character too, and form part of the impact on the consumer...’

 

In its submission, the applicant states:

 

‘5...and in the case of the [proprietor's trade mark] additional words in smaller font and of a marketing nature...’

And:

 

‘11.  The addition of the slogan "INHALE THE FREEDOM" does not, it is submitted, alter the perception of the overall impression created by the mark.  These words would not be particularly remembered by the average consumer, given the size of font in relation to the main word, the position in the mark and the nature of the words.’

 

24.    While I agree with the proprietor that it is a component which will be understood as the word ‘Vaporized’ (presented in title case in green) which is the most prominent word in its trade mark, I do not agree that it is ‘highly stylised’.  Whilst I accept that on close inspection the letter ‘V’ is formed from ‘the silhouettes of two e-cigarette devices’, that was not the impression conveyed to me (at least until it was pointed out).  Similarly, whilst I accept that it may have been the intention, I think it most unlikely that the average consumer will (if he notices it at all) interpret the vertical stroke of the letter ‘d’ as a ‘plume of vapour.’ As to the circular device presented in a lighter shade of green which surrounds the letter ‘V’, given its size and positioning it makes a visual impact, albeit, in my view, a non-distinctive impact which is unlikely to make much (if any) contribution towards the overall impression the trade mark conveys.  Finally, as for the words ‘INHALE THE FREEDOM’ presented in the same colour green as the word ‘Vaporized’, while I am inclined to agree with the applicant that such words are more likely than not to be regarded by the average consumer as promotional in nature, that does not, of course, prevent them from having trade mark significance.  However, even if the average consumer regards them as origin specific, given their size and positioning in the context of the trade mark as a whole, their contribution to the overall impression the trade mark conveys will be limited.  While the overall impression the trade mark conveys will, in my view, be heavily weighted in favour of the word ‘Vaporized’, I accept that the words ‘INHALE THE FREEDOM’ may make a contribution to the overall impression, albeit in my view, a much less significant contribution.

 

25.       Both trade marks contain a word component consisting of eight and nine letters respectively.  Both word components begin with the same four letters i.e.  ‘V‑a-p-o’ and contain the same string of letters i.e.  ‘r-i-z’ albeit in the sixth to eight letter positions in the applicant's trade mark and the fifth to seventh letter positions in the proprietor's trade mark.  Both trade marks contain either an element presented in green (the applicant's trade mark) or are wholly presented in green (the proprietor's trade mark).  They differ to the extent that the applicant's trade mark has a letter ‘u’ in the fifth letter position and the proprietor's trade mark the letters ‘e-d’ in the eighth and ninth letter positions.  There are also other differences i.e.  the plume/flame device in the applicant's trade mark, the actual shade of green which appears in the competing trade marks and the words ‘INHALE THE FREEDOM’ which appear in the proprietor's trade mark.  Balancing the similarities and differences, I consider there to be a low to medium degree of visual similarity between the trade marks at issue.

 

26.       Turning to aural similarity, it is well established that when a trade mark consists of a combination of words and figurative elements, it is most likely to be referred to by the word elements.  In my view, the applicant's trade mark will be referred to by reference to the three syllable word Va-pour-iz(e), whereas the proprietor's trade mark will be referred to in one of two ways i.e. as the three syllable word Va-por-ized alone or as a combination of this word and the five syllable phrase ‘IN-HALE THE FREE-DOM’.  Given the dominance of the word ‘Vaporized, reference to the proprietor's trade mark by the word ‘Vaporized’ alone is, in my view, a real possibility.  If that is correct, the aural comparison is between two three syllable words which have identical first and second syllables and highly similar third syllables.  In those circumstances, the competing trade marks are, in my view, aurally similar to a very high degree.  However, even if I am wrong and the average consumer does refer to the proprietor's trade mark by all the word elements of which it is made up, as the word ‘Vaporized’ would still be the first word spoken, the competing trade marks remain aurally similar to a fairly high degree.

 

27.       Finally, the conceptual comparison.  Both parties field of interest is the vaping market.  As collinsdictionary.com explains, to ‘vape’ is to ‘inhale nicotine vapour (from an electronic cigarette).’ The word ‘Vaporized’ in the proprietor's trade mark is a variant spelling and the past tense of the word ‘Vaporise’ which, as its evidence shows, means to ‘cause to change into a vapour’:  the word ‘Vapouriz’ in the applicant's trade mark is a misspelling of the word ‘Vaporise’.  As ‘Vapouriz’ and ‘Vaporized’ refer to the act of changing something into a vapour or something that has been changed into a vapour respectively, the conceptual messages sent by the two words are similar to the highest degree.  As all of the other components in the competing trade marks including the words ‘INHALE THE FREEDOM’ reinforce the reference to either smoking in general or vaping in particular, they do no nothing to change the conceptual messages conveyed by the words I have described above.”

 

[38]      Ms Pickard challenged the HO’s assessment of what were the dominant and distinctive features of the two marks.  He was wrong, she said, to go through these element by element and to dismiss so many elements as non-distinctive.  He was wrong to conclude that the plume device made a 50% contribution to the distinctiveness of the respondent’s mark.  He had also erred, she said, in assuming that its word element was dominant and distinctive.  Further, he should not have discounted the black background as non-distinctive.  Turning to the HO’s assessment of the appellant’s TM, the HO had made similar errors to those in his assessment of the respondent’s TM.  He was wrong to discount the circle, the stylised “V” and the strapline “Inhale the freedom”.  He was wrong to focus on the word element of each mark.  She argued that the semantic meaning resided in all of the elements of the two marks and that if one viewed them side by side, they were very different.  Alternatively, she argued, any similarity resided in the non-distinctive elements and so they would not be dominant in the impression of the average consumer.  She did not challenge the HO’s conclusion that the respondent’s TM had a low distinctive character.  She challenged the HO’s determinations recorded in the second to fifth bullet points containing his summary findings, at paragraph 32 of the Decision, quoted below at paragraph [45].

[39]      Ms Pickard argued that the HO had erred in comparing the marks.  Instead of conducting the comparison on the basis of the marks as a whole, she also argued that the HO artificially dissected the marks into their component parts and carried out his assessment of their similarity on the basis of their component parts, contrary to the approach in Sabel at paragraph 23; Matratzen at paras 32 to 33; and OHIM v Shaker di L Laudato & C Sas, Case C-334/05 P, [2007] ECR I-4529.  Whilst the HO set out the correct approach at paragraphs 20 to 21 (and indeed warned himself against artificially dissecting the marks), he nevertheless failed to carry out the exercise properly.  In particular: 

(a)        the HO began his analysis at paragraph 22 by noting that the respondent’s TM consisted of a “number of components” and then went on to list them; 

(b)        the HO then conducted a similar exercise at paragraphs 23-24 in relation to the appellant’s TM;

(c)        having dissected the marks into their component parts, the HO then came to consider their visual, aural and conceptual similarity.  But, in doing this, he focussed in on the word “vaporized” of the appellant’s TM and “vapouriz” of the respondent’s TM (see paragraphs 25 to 27) rather than on the marks as a whole;

(d)       his conclusions were that visually, there was a low to medium degree of similarity (para 25);  aurally, there was a fairly high degree of similarity (para 26) and conceptually, the words were similar to the “highest degree” (para 27). 

[40]      Accordingly, had the HO not drilled down to a component-by-component analysis, his conclusions on the degree of similarity between the marks would have been different.  Indeed, she argued, he would have found them to be visually and aurally dissimilar and would have found a lower degree of conceptual similarity. 

[41]      Ms Pickard noted that the respondent’s position is that the HO followed the correct approach in law on the basis that he set out the relevant test earlier on in his decision.  The respondent goes on to make the submission that there was no error in principle in his approach and therefore no basis on which to interfere.  However, she argued that the fact that the HO set out the relevant test was not determinative of the question of whether he properly applied that test. 

[42]      The comparison must be done through the eyes of the average consumer and it must always be kept in mind that the average consumer perceives the marks as a whole.  This is especially important where the marks are device marks containing words presented in a very particular way:  such marks “convey a message in a more subtle fashion than a mark consisting merely of a single word or even series of words” (per the Appointed Person in Kurt Geiger Ltd at para 28). 

[43]      As noted in Julius Sämaan Ltd v Tetrosyl Ltd [2006] FSR 42, where marks are device marks, it is generally the case that the visual elements will be particularly important especially where, as here, the products are marketed and sold on websites where visual elements are key.  As such, she argued, it is crucial when comparing device marks to take a step back and compare them as a whole.  The danger of descending to an analysis of the component parts, is that the exercise conducted does not correspond to the approach of the average consumer: 

“The problem with forcing marks through an analysis such as that carried out by the Hearing Officer in paragraphs 38 and 39 is that it necessarily involves mentally dividing the mark into its component parts, thus losing the overall impression given by the combination of those parts and by the way in which they are combined.  This is not the approach which the average consumer is deemed to take, nor the approach he or she would actually take in real life.  When assessing likelihood of confusion, this approach is therefore likely to lead to error”: Kurt Geiger at para 31. 

 

Here, she said, the HO fell into the trap of analysing similarity on the basis of component parts rather than on the basis of the marks as a whole.  As a consequence, he failed to adopt the approach of the average consumer and therefore erred in principle.

 

(iii)   Ground of Challenge 3: Assessment of the Likelihood of Confusion

[44]      The next section in the HO’s Decision (from paragraphs 28 to 31) concerns the distinctive character of the respondent’s TM.  Ms Pickard took no issue with this part of the Decision.  However, the issue of distinctiveness is part of the context for the assessment of likelihood of confusion, which is the subject matter of Ms Pickard’s third ground of challenge.  It is helpful it understanding that ground of challenge to note the HO’s determination of the issue of distinctiveness, where he stated: 

“28.  I must now assess the distinctive character of the applicant's trade mark.  The distinctive character of a trade mark can be appraised only, first, by reference to the goods for which it is registered and, secondly, by reference to the way it is perceived by the relevant public — Rewe Zentral AG v OHIM (LITE) [2002] ETMR 91.  In determining the distinctive character of a trade mark and, accordingly, in assessing whether it is highly distinctive, it is necessary to make an overall assessment of the greater or lesser capacity of the trade mark to identify the goods for which it has been registered as coming from a particular undertaking and thus to distinguish those goods from those of other undertakings - Windsurfing Chiemsee v Huber and Attenberger Joined Cases C-108/97 and C-109/97 [1999] ETMR 585.

 

29.    The date at which the distinctive character of the applicant's earlier trade mark is to be assessed, is the date of filing of the proprietor's trade mark i.e.  12 December 2014.  As I mentioned earlier, in its Application for Cancellation, the applicant stated:

 

‘Vapouriz as a brand has been trading since June 2011...

...Vapouriz is the 6th biggest e cigarette company in the UK (source Nielsen Data Dec 2014)...’

 

30.    Notwithstanding the above comments, the applicant has filed no evidence of the use it has made of its earlier trade mark.  I have, as a consequence, only the inherent distinctiveness of its trade mark to consider.  As I mentioned earlier, the overall impression of the applicant's trade mark will be dominated by the stylised device of a plume/flame and what will be understood by the average consumer as the word ‘Vapouriz’, each component making a roughly equal contribution.  Earlier in this decision I commented upon the area of trade mark in which the parties are engaged and provided definitions of the words ‘vaporise’ and ‘vape’.  It is, as a consequence, not surprising that the proprietor was able to provide evidence (albeit from after the material date) which shows that there are numerous third party undertakings using brand names which include ‘VAPOUR’, ‘Vapours’ and ‘VAPOR’ as a component and in which the word ‘Vaporised’ is used in a descriptive sense, for example, www.itv.com/news dated 12 June 2013 (at page 60) in which the following appears:

 

‘When the user sucks on the e-cigarette, liquid nicotine is vaporised and absorbed through the mouth.  When they breathe out, a plume of what...’

 

31.       In my view, the components which dominate the applicant's trade mark consist of a combination of the misspelling of a word meaning to ‘cause to change into a vapour’, which relates to a characteristic of the applicant's goods together with the device of a plume which relates to the emissions produced when using the applicant's goods.  The plume device is, however, fairly stylised and has (at worst) a low degree of inherent distinctive character.  As to the word ‘Vapouriz’, although misspelt, given the obvious significance of the word ’vaporise’ in relation to the goods of interest, the word ‘Vapouriz’ is, in my view, possessed of a low degree of inherent distinctive character.  In the context of these proceedings, the latter finding is, of course, the most significant.”

 

[45]      The third ground of challenge is directed to the HO’s assessment of the likelihood of confusion contained in paragraphs 32 to 36 of the Decision.  These paragraphs are as follows:-

“32.    In determining whether there is a likelihood of confusion, a number of factors need to be borne in mind.  The first is the interdependency principle i.e.  a lesser degree of similarity between the respective trade marks may be offset by a greater degree of similarity between the respective goods and vice versa.  As I mentioned above, it is also necessary for me to factor in the distinctive character of the applicant's trade mark as the more distinctive this trade mark is the greater the likelihood of confusion.  I must also keep in mind the average consumer for the goods, the nature of the purchasing process and that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them he has retained in his mind.  Earlier in this decision I concluded that:

·    the competing goods are identical;

·    the average consumer is a member of the adult general public who will select the goods at issue by a combination of both visual and aural means and who will pay a reasonably high degree of attention during that process;

·    the overall impression conveyed by the applicant's trade mark will be dominated by the device of a plume and the word ‘Vapouriz’ each of which makes a roughly equal contribution;

·    the overall impression conveyed by the proprietor's trade mark will be heavily weighted in favour of the word ’Vaporized’ which appears within it;

·    the competing trade marks are visually similar to a low to medium degree, aurally similar to (at least) a fairly high degree and conceptually similar to a high degree;

·    the two components which dominate the overall impression the applicant's trade mark conveys are of low distinctive character as is the trade mark as a whole.

 

33.     In Kurt Geiger v A-List Corporate Limited, BL O-075-13, Mr lain 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.  He said:

 

‘38.  The Hearing Officer cited Sabel v Puma at paragraph 50 of her decision for the proposition that 'the more distinctive it is, either by inherent nature or by use, the greater the likelihood of confusion'.  This is indeed what was said in Sabel.  However, it is a far from complete statement which can lead to error if applied simplistically.

 

39.       It is always important to bear in mind what it is about the earlier mark which gives it distinctive character.  In particular, if distinctiveness is provided by an aspect of the mark which has no counterpart in the mark alleged to be confusingly similar, then the distinctiveness will not increase the likelihood of confusion at all.  If anything it will reduce it.'

 

40.       In other words, simply considering the level of distinctive character possessed by the earlier mark is not enough.  It is important to ask 'in what does the distinctive character of the earlier mark lie?' Only after that has been done can a proper assessment of the likelihood of confusion be carried out’.

 

In L'Oreal SA v OHIM, Case C-235/05 P, the CJEU found that:

 

‘45.  The applicant's approach would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance.  The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question.  If that were the case, it would be possible to register a complex mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that complex mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations and not that that difference denoted goods from different traders.’

 

34.       I begin by reminding myself that the identical goods at issue will be purchased with a reasonably high degree of attention (thus making the average consumer less prone to the effects of imperfect recollection) and that the component of the applicant's trade mark which conflicts with the proprietor's trade mark is of low distinctive character.  However, as the L'Oreal case makes clear, the fact that the competing trade marks only coincide in relation to a component which has a weak distinctive character does not preclude a likelihood of confusion.  In Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-342/9 the CJEU held that:

 

‘In the light of the foregoing, the answer to the questions referred to the Court must be that it is possible that mere aural similarity between trade marks may create a likelihood of confusion within the meaning of Article 5(1)(b) of the Directive.’

 

35.       Notwithstanding the only low to medium degree of visual similarity between the competing trade marks, the (at least) fairly high degree of aural similarity I have identified, in circumstances where aural considerations form a not insignificant part of the selection process, is sufficient to lead to a likelihood of confusion.  In my view, and irrespective of whether the words ‘INHALE THE FREEDOM’ in the proprietor's trade mark are articulated, the competing trade marks are likely to be mistaken for one another i.e. there will be direct confusion.  That conclusion is sufficient for the application for cancellation to succeed.

 

36.       In reaching the above conclusion, I have not overlooked the evidence of Mr North in relation to his Linked-In conversation with Mr O'Connell or his e-mail exchange with Mr Mackintosh.  These are, however, only two examples and, as the proprietor states and the applicant accepts, both took place and relate to matters which took place after the material date.”

 

[46]      In respect of these paragraphs, Ms Pickard argues that the proper assessment is a global one, conducted through the eyes of the average consumer, and it requires a weighing up of the various interdependent factors.  She submitted that the HO failed in various respects to carry out that assessment properly and as a consequence, reached a conclusion that was plainly wrong.  She argued that:

1.   The HO failed to assess the likelihood of confusion by reference to the marks as a whole, but focussed on certain components of the marks to the exclusion of other components.  In particular, despite the fact that both marks were device marks for use in respect of e-cigarettes, undue focus was given to the words “Vapouriz”/ “Vaporized”, notwithstanding the evidence that these and similar terms were widely used for e-cigarettes and were essentially descriptive:  see paragraphs 32 (3^rd and 4^th bullet points) of the Decision. 

 

2.   The HO gave undue weight to the finding that there was a fairly high degree of aural similarity between the marks and that aural considerations would form a “not insignificant” part of the selection process, despite the fact that aural similarity was based on the words “Vapouriz” / “Vaporized”, which were essentially descriptive, and there was no evidence that aural considerations were significant or, if they were, no consideration as to the way in which the average consumer would aurally refer to the marks:  see paragraphs  32 (fifth bullet point) and 33 to 35 of the Decision.

 

3.   The HO also erred in law in failing to take into account properly, or at all, the fact that the similarity between the marks resided in their essentially descriptive and non-distinctive element ie the words “Vapourz” and “Vaporized”.

 

[47]      She noted that the respondent’s answer to these points was to deny that there was any basis to interfere with the HO’s Decision on appeal.  This was, she said, essentially to shelter behind its submission (which the appellant says is misconceived) that the test for interfering with a multi-factorial decision is a very high one. 

[48]      Ms Pickard argued that the fact that the HO’s approach had gone wrong was apparent from the inconsistencies in the HO’s reasoning at paragraphs 34-35.  At paragraph 34 the HO stated that the average consumer would buy the goods with a “reasonably high degree of attention” and stated that “the component of the applicant’s trade mark which conflicts with the proprietor’s trade mark is of low distinctive character” (ie the words “Vaporized” and “Vapouriz”).  She surmised that one would have thought that this would give the HO pause to reflect:  on the basis that the average consumer expects lots of e-cigarette products to be referred to by terms such as “vapour” and “vaporised”, would the average consumer really rely simply on the words “Vaporized” or “Vapouriz” to refer aurally to the marks?  Or would he be more likely to refer aurally to the marks in other ways eg “Vaporized – Inhale the Freedom” or “Vapouriz – the one with a green plume”?  

[49]      However, she said, the HO did not draw the link between the expectations of the average consumer and the way in which the HO speculates that the average consumer would use the mark aurally.  Nor did the HO give any consideration to the fact that both marks are, in fact, device marks and would be known to the average consumer as such.  Furthermore, the HO failed to consider that given the descriptive nature of the words “Vaporized” and “Vapouriz”, the distinctive character inherent in the marks lies in their visual elements of the device marks and it is therefore wrong to ignore, as the HO ultimately does, those elements when reaching a conclusion on the likelihood of confusion. 

[50]      Further, Ms Pickard argued that the HO’s misquotation from the case of Kurt Geiger, at paragraph 33 of the Decision, contributed to this error.  (The HO had omitted an example from paragraph 40 of that case, concerning the use of the word “soap” and the text the HO quoted as paragraph 40 is a gloss on that case, rather than a quotation from it.) In that case, it was held that it was only if the distinctive element was the common element that the likelihood of confusion increased.  Had the HO appreciated the whole passage, he would not have focused, wrongly, on the word element of the two marks.  Had the HO had that graphic example in mind, he would not have fallen into the error that he did in assessing the likelihood of confusion.  Instead, he would have recognised that any confusion that may be caused by the two marks subsisting together would be wholly due to the presence in them of terms that were descriptive in the trade. 

[51]      Furthermore, the respondent’s reliance on the case of L’Oreal SA v OHIM (C-235/05 P), was, Ms Pickard said, no answer to the HO’s misquotation of the Kurt Geiger passage.  In the instant case, the only similarity resided in the non-distinctive elements of the marks.  Accordingly, something has gone wrong with the HO’s reasoning at paragraph 33 of his Decision. 

[52]      The key failure was at paragraph 35 of the Decision.  The HO has wrongly focused only on the words and he has proceeded solely on the basis of their aural similarity.  He had given this undue weight.  This is wrong.  Ms Pickard suggested that it is worth remembering the words of Millett LJ in the European Ltd v Economist Newspaper Ltd [1998] ETMR 307:  “where descriptive words are included in a registered trade mark, the courts have always and rightly been exceedingly wary of granting a monopoly in their use”.  That wariness should equally be applied in the context of attempts to invalidate competitor’s marks on the basis of a descriptive word.

[53]      She invited the court to answer all of the questions of law for the court in the affirmative.

 

Submissions on behalf of the Respondent

Preliminary Issue

[54]      In relation to the difference in wording in the procedural rules of the two jurisdictions, namely of a “review” in rule 52.11(1) of the CPR and a “rehearing” in rule 55.19(10) of the RCS, Mr Tariq’s position was that this was a semantic but not a substantive difference.  He helpfully traced the evolution of the position under the English procedural rules.  Part 52 of the CPR came into force on 2 May 2002 and applied a general code for appeals, subject to any specified statutory provision.  By rule 52.11(1) of the CPR every appeal was “limited to a review of the decision of the lower court”.  The effect of this change was considered in a number of English cases.  In Dupont the Court of Appeal considered the impact of the change in rule 52.11 of the CPR on the nature of appeals under the Trade Marks Act of 1938 and the TMA 1994.  Prior to rule 52.11, the former rules provided for a rehearing.  However, this had never been understood as a rehearing in the fullest sense of the word.  Reference was made to the discussion by May LJ in Dupont (from para 84) and his observation (at para 90):

“The court did not hear the case again from the start.  It reviewed the decision under appeal giving it the respect appropriate to the nature of the court or tribunal, the subject matter and, importantly, the nature of those parts of the decision making process which were challenged.”

 

Turning to the new rule, May LJ noted in Dupont that, as the new rule embodied in rule 52.11 was to be applied to a broad range of cases, it had to have a degree of flexibility (see para 93).  A review was not to be equiparated with judicial review.  Rather, it was, May LJ said (at para 94):

“closely akin to, although not conceptually identical with, the scope of an appeal to the Court of Appeal under the former Rules of the Supreme Court.  The review will engage the merits of the appeal.  It will accord appropriate respect to the decision of the lower court.  Appropriate respect will be tempered by the nature of the lower court and its decision making process.  There will also be a spectrum of appropriate respect depending on the nature of the decision of the lower court which is challenged.  At one end of the spectrum will be decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions.  Further along the spectrum will be multi-factorial decisions often dependent on inferences and an analysis of documentary material.”

 

Mr Tariq suggested that the evaluation by a hearing officer was at the end of a spectrum covering multi-factorial decisions.  This was relevant to the degree of the court’s reluctance to interfere with a decision of that character. 

[55]      In Assicurazioni Generali SpA v Arab Insurance Group (BSC) [2002] EWCA Civ 1642 (“Assicurazioni”), a differently constituted Court of Appeal also considered this same issue.  It too observed (at para 11) that even under the old rules a rehearing was not a rehearing in the fullest sense of the word but was essentially one of review (see para 13 of Assicurazioni).  The approach of the court depended upon the nature of the issues determined at first instance (see para 14).  Further, while some conclusions of fact were conclusions of primary fact, others involved an evaluative assessment of a number of different factors.  Such cases were said to be analogous to an exercise of discretion and to be approached in a similar way (see para 16).  It was not correct, as the appellant’s counsel appeared to suggest, that a multi-factorial assessment was different from an exercise of discretion. 

[56]      Mr Tariq referred to the further discussion by the Court of Appeal in that case of the evaluative character of fact finding (at paras 18 to 20), and to the observation of Ward LJ (at paras 194 and 195) that rule 52.11 of the CPR had not effected a change in approach, and that even under the old rules the rehearing was in the form of a review, which was of a more limited character. 

[57]      Mr Tariq next referred to BUD and Budweiser Budbräu Trade Marks [2003] RPC 25 (“BUD”) at paragraphs 52 to 53, for the observations of the Court of Appeal that neither surprise at a hearing officer’s conclusion nor a belief that he has reached the wrong decision were sufficient to justify interference by the court.  While in that case the English Court of Appeal (Civil Division) had disagreed with the hearing officer’s decision, it concluded that the hearing officer was entitled to reach that view and there was no basis to justify departure from his decision.  Mr Tariq also referred to Digipos Store Solutions Group Ltd v Digi International Inc [2008] EWHC 3371 (Ch): [2008] RPC 24 (“Digipos”), a decision of Daniel Alexander QC sitting as a Deputy Judge in the High Court.  After referring to the passages in REEF and BUD just referred to, Mr Alexander QC had stated (at para 6) that:

“in the context of appeals from the registrar relating to section 5(2)(b) of the Act, alleged errors that consist of wrongly assessing similarities between marks, attributing too much or too little discernment to the average consumer or giving too much or too little weight to certain factors in the multi-factorial global assessment are not errors of principle warranting interference”.

 

In other words, disagreement with the judgment of the hearing officer was not enough to justify interference by an appellate court.  This passage in Digipos had been cited with approval in subsequent cases, eg, in Weaver v Warimex Waren-Import Export Handels GmbH BL O-201-16.  The respondent’s proposed additional wording to principle 2 of the Agreed Legal Principles reflected this, which the court should accept.  Ms Pickard had not criticised this and, indeed, she too had referred to TT Education Limited. 

[58]      Accordingly, in order to challenge an evaluative finding of fact it was necessary to show that the judge or tribunal at first instance was plainly wrong.  Lord Reed had recently provided guidance on what this phrase meant, in the Scottish case Henderson v Foxworth Investments Ltd 2014 SC (UKSC) 203 (“Henderson”) in the Supreme Court.  After noting that the correct test in Scotland for interference by an appellate court in findings of fact was that the trial judge had gone “plainly wrong”, Lord Reed stated (at para 62): 

“…there may be some value in considering the meaning of that phrase.  There is a risk that it may be misunderstood.  The adverb ‘plainly’ does not refer to the degree of confidence felt by the appellate court that it would not have reached the same conclusion as the trial judge.  It does not matter, with whatever degree of certainty, that the appellate court considers that it would have reached a different conclusion.  What matters is whether the decision under appeal is one that no reasonable judge could have reached.” (Emphasis added.)

 

Mr Tariq laid particular stress on the last sentence of that passage.  After reviewing Thomas v Thomas 1947 SC(HL) 45, Lord Reed concluded (at para 67):

“It follows that, in the absence of some other identifiable error, such as (without attempting an exhaustive account) a material error of law, or the making of a critical finding of fact which has no basis in the evidence, or a demonstrable misunderstanding of relevant evidence, or a demonstrable failure to consider relevant evidence, an appellate court will interfere with the findings of fact made by a trial judge only if it is satisfied that his decision cannot reasonably be explained or justified.”

 

It was important, Mr Tariq said, to distinguish between the appellate function in respect of errors of law and in respect of findings in fact.  The observations just referred to related to the appellate function in respect of fact-finding by the first instance court.  There was a spectrum of cases of that character, which included a multi-factorial assessment.  Disagreement with that type of assessment was neither a sufficient basis of challenge by a dissatisfied party, nor a basis of interference by an appellate court.  The court should not, as Ms Pickard contended, delete the word “plainly” as a modifier of “wrong” from the test for review by an appellate court.  Therefore, Mr Tariq argued, the “plainly wrong” test was the correct one to be applied by this court to appeals from the decisions of hearing officers.  The observations in Henderson were binding on this court. 

[59]      If further support were needed, in the context of a trade mark case, this was found in the recent case of TT Education Limited, another decision of Daniel Alexander QC sitting as an appointed person.  In that case he undertook a thorough review of the role of the appellate function in trade mark appeals (at paras 14 to 51), including consideration of the cases of REEF, BUD and Dupont, as well as other cases outwith the context of trade mark law, such as Re B and Henderson.  From all of this Mr Alexander QC extracted a number of principles, which he articulated (in para 52 (or more accurately, the first paragraph numbered 52, as the numbering after para 55 reverts to para 35)) as follows, although he warned that this was not intended to be a summary of universal application:

“(i)       Appeals to the Appointed Person are limited to a review of the decision of Registrar (CPR 52.11).  The Appointed Person will overturn a decision of the Registrar if, but only if, it is wrong (Patents Act 1977, CPR 52.11). 

 

(ii)        The approach required depends on the nature of decision in question (REEF).  There is spectrum of appropriate respect for the Registrar’s determination depending on the nature of the decision.  At one end of the spectrum are decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions.  Further along the spectrum are multi-factorial decisions often dependent on inferences and an analysis of documentary material (REEF, DuPont). 

 

(iii)       In the case of conclusions on primary facts it is only in a rare case, such as where that conclusion was one for which there was no evidence in support, which was based on a misunderstanding of the evidence, or which no reasonable judge could have reached, that the Appointed Person should interfere with it (Re:  B and others). 

 

(iv)      In the case of a multi-factorial assessment or evaluation, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.  Special caution is required before overturning such decisions.  In particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the appellate court would have made in a situation where reasonable people may differ as to the outcome of such a multi-factorial evaluation (REEF, BUD, Fine & Country and others). 

 

(v)       Situations where the Registrar’s decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong.  It is not necessary for the degree of error to be “clearly” or “plainly” wrong to warrant appellate interference but mere doubt about the decision will not suffice.  However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar's decision was wrong, should the appeal be allowed (Re:  B). 

 

(vi)      The Appointed Person should not treat a decision as containing an error of principle simply because of a belief that the decision could have been better expressed.  Appellate courts should not rush to find misdirections warranting reversal simply because they might have reached a different conclusion on the facts or expressed themselves differently.  Moreover, in evaluating the evidence the Appointed Person is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account.  (REEF, Henderson and others).”

 

[60]      Mr Tariq made several additional points about this case.  The appointed person in that case did not, pace the appellant’s contention, “recant” from his observations in Digibos (see para 20 of TT Education Limited).  His discussion of “wrong” and “plainly wrong” (at paras 21 to 22) had to be understood in the context of chapter 52 of the CPR, which permitted reversal of a decision if it was “wrong”.  In his discussion of Henderson at paragraphs 44 to 50, albeit his reference at paragraph 45 to Lord Kerr, should have been to Lord Reed, the stress was on the continuity of approach with the earlier cases.  There was no suggestion that the Supreme Court in that case was suggesting a lower standard of review by an appellate court.  Accordingly, for the purposes of a Scottish appeal, the reference to “wrong” in paragraphs (iv) and (v) of the summary in TT Education Limited should be read as “plainly wrong”.  In substance, it was the same test because, per Lord Reed in Henderson, “plainly wrong” meant a decision outside the spectrum where reasonable people may differ. 

[61]      Mr Tariq submitted that this court is equally bound by these principles in the context of an appeal from a decision of a hearing officer.  The role of the court is to consider the HO’s decision and, where necessary, analyse the underlying evidence, before determining whether the HO has materially erred in law and principle and/or that his decision was clearly wrong. 

[62]      From the case-law Mr Tariq drew some further points relevant to the approach to decisions of hearing officers and the standard of reasoning those decisions are required to reach.  First, the role of the court was not to undertake an “over-meticulous analysis” of the hearing officer’s decision, per Laddie J in SC Prodal 94 Srl v Spirits International NV [2003] EWHC 2756 at paragraph 9, after citation of observation to like effect in REEF at paragraph 29 per Robert Walker LJ, namely,

  “[t]he appellate court should not treat a judgment or written decision as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed.  The duty to give reasons must not be turned into an intolerable burden.”

 

 Secondly, under reference to Fage UK Ltd v Chobani UK Ltd [2014] ETMR 26, he argued that the decisions of hearing officers did not require to be exhaustive.  As Lewison LJ said in that case (at para 115):

“The primary function of a first instance judge is to find facts and identify the crucial legal points and to advance reasons for deciding them in a particular way.  He should give his reasons in sufficient detail to show the parties and, if need be, the Court of Appeal the principles on which he has acted and the reasons that have led him to his decision.  They need not be elaborate.  There is no duty on a judge, in giving his reasons, to deal with every argument presented by counsel in support of his case.  His function is to reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury.  Nor need he deal at any length with matters that are not disputed.  It is sufficient if what he says shows the basis on which he has acted.  These are not controversial observations:  see Customs and Excise Commissioners v A [2002] EWCA Civ 1039:  [2003] Fam.  55:  Bekoe v Broomes [2005] UKPC 39:  Argos Ltd v Office of Fair Trading [2006] EWCA Civ 1318:  [2006] U.K.C.L.R.  1135.”

 

Finally, Mr Tariq referred to the observations at paragraph 19 of Pegas Touristik UK Ltd BL‑O‑603-15.  In dealing with a submission that a hearing officer had given too much weight to factors in favour of similarity and not enough weight to factors against similarity, Iain Purvis QC, sitting as an appointed person, rejected this, stating:

“This does not amount to an ‘error of principle’.  A Hearing Officer is not obliged to set out all of the factors (for and against) in relation to any particular decision.  It is sufficient to set out a summary of the key factors which led to her reach the view she did.”

 

The Character of the Decision-Making Under Consideration

[63]      In REEF Trade Mark [2003] RPC 5, the English Court of Appeal (Civil Division) held, inter alia, that as the hearing officer had heard no oral evidence, “an appellate court should […] show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle” (para 28).  In substance, if the challenge concerned a question of law, the hearing officer was either right or wrong.  In relation to a challenge to his evaluation of the facts, however, it had to be demonstrated that he was plainly wrong.  The case law in England was well‑developed.  This court should use a known formulation (“plainly wrong”) because it was well–developed and recognised, not because it was found in the English procedural rules.

[64]      Here, he said, the HO had outlined (at para 14) the principles relevant to his assessment under section 5(2)(b) of the TMA 1994.  Thereafter he had applied those principles to his assessment.  The alleged errors of law identified in the appellant’s grounds of appeal are all matters on which the court should not interfere with the decision of the HO.  This is a decision of an experienced HO consisting largely of value judgments.  The appellant’s criticisms of that decision amount to no more than a disagreement with the HO’S assessment of the issues before him.  The HO was entitled to reach the view that he did on the evidence before him and there is no basis in law to open up that decision.  There was no material error of principle; the Decision was not plainly wrong. 

[65]      Mr Tariq moved on to reply to the appellant’s three grounds of challenge to the HO’s Decision.

 

(i) Ground of Challenge 1: Characteristics of the Average Consumer and the Purchasing Process

[66]      Turning to the first ground of challenge, concerning the characteristics of the average consumer and the purchasing process, Mr Tariq argued that the HO required to determine the characteristics of the average consumer of e-cigarettes and the nature of the purchasing process in the course of his assessment under section 5(2)(b) of the TMA 1994.  The HO determined that the average consumer is a member of the adult general public who will select the goods at issue by a combination of both visual and aural means and who will pay a reasonably high degree of attention during that process.  In terms of the purchasing process, the HO noted at paragraph 18:

“As the evidence shows, the goods at issue may be selected from the pages of a website or catalogue as well as from traditional retail outlets on the high street.  This suggests that visual considerations are likely to form a significant part of the selection process.  That said, as the goods may also be the subject of word-of-mouth recommendations and requests to sale assistants in, for example, retail outlets on the high street, aural considerations will have a not insignificant part to play.”

 

[67]      Mr Tariq noted that the appellant criticises the HO’s conclusion that e-cigarettes maybe subject to word-of-mouth recommendations and spoken requests to sales assistants on the basis that there is no evidence to support this conclusion.  It was not correct that there was no evidence of word-of-mouth or oral requests in a retail shop.  He submitted that there was ample evidence of primary fact of retail purchases.  He referred to paragraphs 4, 5, 8 to 10, and 12 and 14 of the witness statement of the respondent’s CEO, Mr Horth.  When spoken, there was confusion between the two marks.  In relation to Form TM26, this was not the same as evidence, but it was a representation made and signed by the author as true.  There was material before the HO supporting an inference of purchases in a retail context.  The marks sound the same.  In relation to the retail sales of a regulated product, some account had to be taken of spoken requests as part of that purchasing process.  This was vouched by the case of New Look Ltd.  Accordingly, if some purchases were made in a retail context, then aural considerations were not irrelevant.  Ms Pickard’s submission was, he said, far removed from the realities of the purchasing process – is it the appellant’s position, as a retailer of e-cigarettes with various retail outlets across the UK, that spoken words through recommendations and interactions with sale assistants have no part to play in the purchasing process?  As the court in REEF said (at para 39):

“Of course, the hearing officer was not obliged to disown all his knowledge of the day-to-day world in which we all live.  Probably no evidence is needed, for instance, to come to the conclusion that the public would regard rubber household gloves, plastic pants for babies and toilet paper as being goods which would be sold through the same sort of trade outlets”

 

Similar observations would apply here.  In the present case, there was a sufficient evidential basis for him to reach that conclusion.  However, if there was no evidence to support this view, the issue is one within judicial knowledge as “judicial notice may be taken of facts that are too notorious to be the subject of serious dispute” (Chorkee’s Trade Mark BL O-048-08).  Mr Tariq argued that the appellant’s criticism was unfounded.  For these reasons, question 1(b) for the court should be answered in the negative. 

[68]      The appellant also criticised the HO (at para 6 of the grounds of appeal) for failing to note that the average consumer would have been aware of the meaning of the words “vaporise” and “vapourize” as well as the widespread use of words such as “vapor”, “vapour”, “vapours” and “vaporised” in relation to the promotion and sale of e-cigarettes. 

[69]      Mr Tariq also pointed out, and as the appellant concedes, the HO has had regard to the use of these words in his discussion on the distinctiveness of the respondent’s trade mark.  Under reference to paragraphs 7 to 9 of the Decision, Mr Tariq argued that the HO had taken account of the average consumer’s understanding of these words.  Further, in the context of the comparison between the competing trade marks, the HO noted that to “vape” is to “inhale nicotine vapour (from an electronic cigarette)”; and that the evidence showed that the word “vapourise” means “to cause to change into a vapour” at paragraph 27.  Therefore, in the comparison of the competing trade marks (which must be judged through the eyes of the average consumer), the HO has had regard to the meaning of the words viewed through the eyes of the average consumer.  If the HO had not proceeded on the basis that the average consumer knew the meaning of these words, he would have framed the Decision in a different way.  In any event, the proposition that the average consumer would perceive these words to be descriptive words in common with the sale of e-cigarettes is, Mr Tariq noted, unvouched.  It appears to be a mere assertion made on behalf of the appellant. 

[70]      In any event, he argued that the HO had noted that the word “vaporise” has “obvious significance” in relation to electronic cigarettes at paragraph 31.  The HO recorded the appellant’s submission on the meaning of these words (at para 7).  He had considered those meanings when comparing the competing trade marks as judged by the average consumer and he had concluded that those words have an “obvious significance” in relation to e-cigarettes.  In these circumstances, it cannot reasonably be suggested that he has failed to take the average consumer’s knowledge of the meaning of the words into account. 

[71]      Here the HO had found (at paras 30 to 31) that the plume device and the misspelt word “Vapouriz”) each had “a low degree of inherent distinctive character”.  It was significant that he did not hold that the word element had no distinctive character.  In other words, this was not a finding that the word used was descriptive.  In her submissions, Ms Pickard wrongly conflated the concepts of distinctive and descriptive.  Given the finding of distinctiveness, albeit of a “low” degree, the respondent’s TM was entitled to protection.  The cases of L’Oreal and Digipos (at para 49 to 50) were of most assistance in respect of such marks.  So long as account was taken of the descriptive element of the marks, that will suffice and this issue did not have to be addressed in a formulaic way.  The appellant’s argument that the HO had ignored the average consumer’s understanding or use of “vape” was wrong; that knowledge was factored throughout his analysis.

[72]      Mr Tariq also reminded the court of the appropriate approach to challenges to the reasoning of hearing officers.  As the court in REEF explained (at para 29):

“The appellate court should not treat a judgment or written decision as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed.  The duty to give reasons must not be turned into an intolerable burden”

 

Similarly, as the Appointed Person stated in Pegas Touristik UK Ltd BL O-603-15 at paragraph 19, “a HO is not obliged to set out all the factors (for and against) in relation to any particular decision.  It is sufficient to set out a summary of the key factors which led her to reach the view she did.  Question 1(b) should be answered in the negative.

 

(ii) Ground of Challenge 2: Comparison of the Trade Marks

The HO determined that the goods for which the respondent and appellant’s trade marks are registered are identical – namely, electronic cigarettes or smokeless cigarettes.  The HO concluded that the competing trade marks are visually similar to a low to medium degree, aurally similar to, at least, a fairly high degree and conceptually similar to a high degree.

[73]      At paragraph 20 of the Decision, the HO noted that similarity of the trade marks must be assessed by the overall impression of the marks, though it is necessary to identify their respective distinctive and dominant components.  The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.  Therefore, he accepted that it would be wrong for the HO artificially to dissect the mark into various components.  However, as the HO explained, ascertaining the overall impression of a mark required him to undertake an “analysis of the components of a sign and of their relative weight in the perception of the target public”: see the Advocate General (at paras 25 to 26) in Bimbo SA v OHIM Case C-591/12P (CJEU), whose reasoning was adopted by the court at paragraph 34.  While the average consumer looks at a mark as a whole, it remains incumbent upon the hearing officer to analyse the different elements.  That does not mean he is artificially dissecting the mark.  The HO’s Decision entirely accords with the guidance in the case law: see eg BUD and Budweiser at paragraphs 44 to 46 and Lloyd Schuhfabrik Meyer & Co GmbH.  This was all reflected in principle 3 of the Agreed Legal Principles.  Accordingly, it is easy to argue that a hearing officer has artificially dissected the marks (see Chorkee at paragraphs 43 to 44).  It is not what the HO has done here.  In these circumstances, the appellant’s criticism at paragraph 8 in the grounds of appeal that the HO has artificially dissected the trade marks into their component parts is misguided.  Question 2(a) should be answered in the negative.

[74]      Ms Pickard had contended that the black rectangle of the respondent’s TM was distinctive, but this is a challenge to a primary fact. She also argued that the dominant elements of the respondent’s TM were the plume/flame and the black rectangle. She sought to discount the word “Vapouriz”, but this approach was not correct. She argued that in general a descriptive element can rarely be the dominant element.  Mr Tariq noted that the example she referred to concerned a single word mark, whereas here there was a complex mark and in which the word (“Vapouriz”) appears across the whole of the respondent’s TM.  Mr Tariq submitted that the word ‘Vapouriz’ leapt off the page. It is obvious that this is the dominant element.

[75]      Ms Pickard had also relied on Matratzen for the proposition that a descriptive word in a complex trade mark cannot be the dominant element.  Later cases, however, were less prescriptive. In any event, that case is also distinguishable. In the instant case, the HO found that the word element (“Vapouriz”) was an element with “low” distinctiveness. That is a critical finding, because that is not the same as holding it was descriptive. The error in Ms Pickard’s approach was to conflate the concepts of distinctiveness and descriptiveness. It was not correct that the HO had not compared the marks as a whole.

[76]      The HO also recognised that account should be taken of the visual, aural and conceptual similarity of the marks in question, including the overall impression given by the marks (Sabel).  However, the visual, aural or conceptual aspects of the opposing marks do not always have the same weight.  Mr Tariq also argued that it is appropriate to examine the objective conditions under which the goods may be present on the market to assess the weight to be given to each of these aspects of the marks (New Look Ltd).  In this regard, the HO had concluded that a member of the adult general public would select the goods by a combination of both visual and aural means.

[77]      The HO had also determined that the overall impression conveyed by the respondent’s TM will be dominated by the device of a plume and the word “Vapouriz”, each of which he found made a roughly equal contribution (para 22).  The appellant criticises the HO at paragraph 8(a) of the grounds of appeal for failing to take into account other elements of the respondent’s TM which would have contributed to the average consumer’s overall impression.  In particular, it is said that the HO failed to take into account the following:

1)   the stylisation of the word “Vapouriz” and in particular, the stylised “i” in the respondent’s TM.  However, Mr Tariq argued that the HO stated at paragraph 22 that “I note the letter ‘i’ has been presented as a device of a cigarette … in my view, the replacement of the letter ‘i’ is likely to go largely unnoticed by the average consumer”;

2)   the black, white and green colour scheme in which there is a stark contrast between the white “Vapouriz” and the black background.  Mr Tariq noted, however, that the HO stated at paragraph 22 that “the applicant’s trade mark [ie the respondent’s TM] consists of a number of components.  The first, is a black rectangular device which acts as a background”; the flame / plume device is presented “as it is in green”; and “the word ‘Vapouriz’ presented in title case in white/grey”;

3)   the use of the graded white on the “Vapouriz” device, with the colour becoming lighter from the bottom to the top of the word.  By way of reply, Mr Tariq observed that the HO noted at paragraph 22 that “the word ‘Vapouriz’ presented in title case in white/grey”, which was a reference to the graded white colouring;

4)   the relative arrangements of the plume / flame device with respect to each other.  Yet, Mr Tariq noted that the HO stated at paragraph 22 in respect of the appellant’s TM that the plume / flame device appears “in the middle of and extending from the top to the bottom of the trade mark (including appearing as a dot in the letter ‘o’ of the word which appears below it)”; and

5)   in respect of the respondent’s TM, the HO had noted that the arrangement of the plume / flame device and the “Vapouriz” device within a black rectangular device.  Against this, Mr Tariq argued that the HO stated at paragraph 22 that “the applicant’s trade mark [ie the respondent’s TM] consists of a number of components.  The first, is a black rectangular device which acts as a background … the second component is what the proprietor describes as a ‘flame / plume device’ … appearing in the middle of and extending from the top to the bottom of the trade mark (including appearing as a dot in the letter ‘o’ of the word which appears below it)”.

[78]      Mr Tariq argued that in the foregoing circumstances, it is plain that the HO has taken these various components of the respondent’s TM into account in assessing the overall impression conveyed by it on the average consumer.  The appellant’s criticisms amount to no more than a disagreement with the HO’s determinations.  Mr Tariq reminded the court that in Digipos, the English High Court of Justice (Chancery Division) explained (at para 6) that:

“in the context of appeals from the registrar relating to section 5(2)(b) of the Act, alleged errors that consist of wrongly assessing similarities between marks, attributing too much or too little discernment to the average consumer or giving too much or too little weight to certain factors in the multi -factorial global assessment are not errors of principle warranting interference.”

 

Returning to the Decision, Mr Tariq noted that the HO thereafter compared the visual (para 25), aural (para 26) and conceptual (para 27) aspects of the competing trade marks (at paras 25, 26 and 27, respectively).

[79]      In terms of the visual comparison, the HO determined:

1.   both trade marks contained a word component of eight and nine letters;

2.   both word components began with the same four letters “Vapo” and contained the same string of three letters “riz”;

3.   both trade marks contained the colour green although the shades and prominence of the colour green are different;

4.   the respondent’s trade mark had an additional letter “u” and the appellant’s trade mark contained the additional letters “ed”;

5.   the respondent’s trade mark contained the words “INHALE THE FREEDOM”;

6.   there was a plume / flame device in the respondent’s trade mark:  and

7.   after balancing the similarities and differences, the HO concluded that there was a “a low to medium degree of visual similarity” between the trade marks (para 25).

[80]      In terms of the aural comparison, the HO determined:

1.   it is well-established that when a trade mark consists of a combination of words and figurative elements, it is most likely to be referred to by the word elements;

2.   the respondent’s trade mark will be referred to by the three syllable word “Va-pour-iz(e)”;

3.   the appellant’s trade mark will either be referred to by the three syllable word “Va-por-ized” alone or a combination of this word and the phrase “INHALE THE FREEDOM”;   

4.   there is a real possibility that the appellant’s trade mark will be referred to as the word “Vaporized” alone and if that is so, both trade marks are “aurally similar to a very high degree” (para 26);  and

5.   even if the average consumer refers to the appellant’s trade mark as “Vaporized – INHALE THE FREEDOM”, the word “Vaporized” is still the first word spoken with the result that both trade marks remain “aurally similar to a fairly high degree” (para 26).

[81]      In terms of the conceptual comparison, the HO determined:

1.   as “Vapouriz” and “Vaporized” refer to the act of changing something into a vapour or something that has been changed into a vapour respectively, the conceptual messages sent by the two words are “similar to the highest degree” (para 27):  and

2.   the inclusion of the phrase “INHALE THE FREEDOM” in the appellant’s trade mark reinforces the conceptual message of smoking in general or vaping in particular.

[82]      In relation to the appellant’s criticisms under this ground of challenge, Mr Tariq argued that the HO undertook a nuanced and well-reasoned comparison of the two trade marks.  The HO’s analysis at paragraphs 22 – 24 of the Decision followed from his assessment of the overall impression conveyed by each trade mark to the average consumer.  The appellant submits that the HO has failed to give due weight to various components of the trade marks or failed to take them into account at all.  Mr Tariq reminded the court that in Pegas Touristik UK Ltd BL O-603-15 (at para 19), the appointed person dismissed an appeal on the basis that:

“the other point … was that the Hearing Officer gave too much weight to the factors in favour of similarity and not enough weight to the factors against similarity, as indicated by the fact that she did not mention those contrary factors in paragraph 28.  This does not amount to an ‘error of principle’.  A Hearing Officer is not obliged to set out all the factors (for and against) in relation to any particular decision.  It is sufficient to set out a summary of the key factors which led her to reach the view she did.”

 

[83]      Mr Tariq also referred to the observations that the role of a judge is to

“reach conclusions and give reasons to support his view, not to spell out every matter as if summing up to a jury… It is sufficient if what he says shows the basis on which he has acted”: Fage UK Ltd per Lewison LJ at paragraph 115.

 

In short, Mr Tariq submitted that the appellant’s approach is misguided.  In Matratzen, the Court of First Instance of the European Communities (Fourth Chamber) confirmed that:

“the assessment of the similarity between two marks must be based on the overall impression created by them, in light, in particular, of their distinctive and dominant components … It should be made clear that that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark.  On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole.  However, that does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components.  ”

 

The appellant’s approach of focusing on a comparison of individual components of the trade mark as demonstrating dissimilarity was therefore flawed.  There had been no error as contended and question 2(b) for the court should be answered in the negative. 

 

(iii) Ground of Challenge 3: Likelihood of Confusion

[84]      The HO determined that the competing trade marks are likely to be mistaken for one another with the result that there is a likelihood of confusion.  He did so on the basis of a number of factors:

1.   the “interdependency principle” – a lesser degree of similarity between the competing trade marks may be off-set by a greater degree of similarity between the respective goods and vice versa.  In the present case, the competing goods are identical (see para 32 of the Decision);

2.   the distinctive character (or the lack thereof) of the respondent’s TM should be considered as the more distinctive this trade mark is, the greater the likelihood of confusion.  In the present case, the two components which dominate the overall impression of the respondent’s trade mark (the device of the plume and the word “Vapouriz”) are of low distinctive character as is the trade mark as a whole.  However, as the case of L’Oréal SA v OHIM Case C-235/05 P makes clear, the fact that the competing trade marks only coincide in relation to a component which has a weak distinctive character (such as the words “Vapouriz” and” Vaporized”) does not preclude a likelihood of confusion (paras 32 – 35 of the Decision);  and

3.   the aural similarity between the trade marks might create a likelihood of confusion (Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV Case C-342/9).  In the present case, the HO had found that aural considerations form “a not insignificant part of the selection process” (as the goods can be subject of word-of-mouth recommendations and requests to sale assistants in, for example, retail outlets on the high street).  Further, he concluded that there was at least a “fairly high degree of aural similarity” between the competing trade marks (at paras 18, 26 and 35 of the Decision).

There was no error in his approach.

[85]      The appellant asserts that the HO ignored the fact that the competing trade marks were device marks and, as such, the visual comparison was the most important factor when assessing the likelihood of confusion.  However, Mr Tariq submitted that the HO did not discount visual elements, as Ms Pickard contended. The HO does not state anywhere in his decision that aural considerations outweigh visual considerations or vice versa.  The HO stated that aural considerations form “a not insignificant part of the selection process” (para 18).  Mr Tariq pointed out that this is not the same as stating that it forms the most important part of the purchasing process. The HO had not given undue weight to aural similarity between the word elements of the two marks. In any event, this was precisely the kind of assessment with which the court should be slow to interfere. Furthermore, in relation to the prominence or otherwise of the word element of a mark, the HO was correct where he stated (at the start of para 26 of the Decision, quoted at para [37], above) that it is well vouched that when a mark is a combination of word and figurative elements, it is usually referred to by the word element. It is established in the case law that the word component of a mark will have a stronger impact on the consumer than the figurative element as the public does not tend to analyse signs and will most readily refer to a sign by its verbal component. See Diemme-Industria Café Torrefatti SpA v The Coca-Cola Company (Case R 13/2014-1) at paragraphs 27 to 29.  The same principle was vouched by BUD (at para 12) and Chorkee (at para 53).  The appellant’s approach, however, was to turn this on its head and to discount the word element in favour of what she asserts are more distinctive or dominant elements. Paragraph 35 of the Decision was accordingly a classic example of a multi-factorial assessment. Mr Tariq submitted that in any event the manner in which question 3(b) as framed was tendentious, given the language it used of “undue weight” to aural similarities.

[86]      In any event, the appellant’s reliance on the case of Julius Samann Ltd v Tetrosyl Ltd [2006] FSR 42 is misguided.  In that case, the court noted (at para 54) that

“this is not a case where aural similarity can play a material part in the assessment.  The case is concerned with graphic marks and the products to which they are applied are selected by purchasers from a shelf or display unit rather than by oral request”. 

 

This is, Mr Tariq argued, distinguishable from the process of purchasing of e-cigarettes, as the HO had held. It is not correct that in every case the visual element is paramount, which seemed to be the import of the appellant’s reliance on Julius Samann Ltd.  That case was concerned with marks where the dominant element was the tree-shape of the marks and in which the word elements were barely visible. It is readily distinguishable from the facts of the instant case. Accordingly, there was no error and question 3(a) and (b) should be answered in the negative.

[87]      The appellant had also contended that the HO failed to take into account that the similarity between the trade marks resided in their non-distinctive elements (the words “Vapouriz” and “Vaporized”).  This was reflected in question 3(c) for the court. However, the appellant has mischaracterised the HO’s Decision. The HO noted (at para 34 of the Decision) that “the component of the applicant’s trade mark which conflicts with the proprietor’s trade mark is of low distinctive character”.

[88]      Therefore, question 3(c) has been incorrectly framed; it is wrongly premised on the assertion that the word elements were descriptive, that is non-distinctive. But that is not what the HO had determined. If the words had been simply descriptive, the mark would not have been registrable. If the appellant wished to challenge this, this was a primary finding of fact and no ground for challenge was identified. This was an example of where the appellant conflated distinctiveness and descriptiveness. In her submissions, Ms Pickard had skipped over or not challenged paragraph 31 of the Decision, which contains the HO’s finding that the word elements were of a “low degree of inherent distinctive character”. This finding was repeated in the second bullet point in paragraph 32 of the Decision. Ms Pickard cannot have it both ways: she cannot say that it is of low distinctiveness (to argue that other elements were more dominant) and to argue that it is purely descriptive. Simply because the overlap between two marks is in respect of elements of low distinctiveness, it does not mean that there is no possibility of confusion.

[89]      Mr Tariq noted that the HO relied on paragraph 45 of L’Oreal SA v OHIM (Case C-235/05P) for the proposition that the fact that the competing trade marks only coincide in relation to a component which has a weak distinctive character does not preclude a likelihood of confusion.  In L’Oréal, the Fourth Chamber of the European Court explained (at paras 43 and 45) that:

“43.     It must therefore be held that the applicant has misconstrued the concepts which govern the determination of whether a likelihood of confusion between two marks exists, by failing to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a complex mark possesses, which is concerned with its ability to dominate the overall impression created by the mark.

[ … ]

45.       The applicant’s approach would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance.  The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question.  If that were the case, it would be possible to register a complex mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that complex mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations and not that that difference denoted goods from different traders.”

 

Mr Tariq also referred to paragraphs 40 to 43 of Digipos. An element of a mark may be of low distinctiveness, descriptive or weak, but if that is so, that is simply one factor to be taken into account in the global assessment. It does not preclude the possibility of confusion. The same point was made in the discussion in Castellani at paragraphs 53 to 60.

[90]      It follows, Mr Tariq said, that the HO has undertaken the global assessment of the likelihood of confusion with reference to the visual, aural or conceptual similarity of the competing trade marks.  There is no error of law or principle in that approach.  Further, Mr Tariq argued that there is no authority for the proposition that only the distinctive element of a trade mark is decisive when assessing the likelihood of confusion. Accordingly, if question 3(c) were reframed to reflect what the HO had decided, that there was low distinctiveness, then given the references to this in the Decision, it should be answered in the negative.

[91]      While the respondent accepts that the HO has misquoted paragraph 40 of the decision of the Appointed Person in Kurt Geiger, Mr Tariq argued that the misquote is not material.  Mr Tariq noted that it would seem that the misquotation is present in a substantial number of other decisions of the Registrar’s hearing officers.  The source of the misquote appears to be the same Appointed Person in Firm of ABX “irevive” Trade Mark BL O-229-13 where at paragraph 21, he quotes paragraphs 38 and 39 of his own decision from Kurt Geiger, and then proceeds to offer his own analysis (at para 22) stating

“in other words, simply considering the level of distinctive character possessed by the earlier mark is not enough.  It is important to ask ‘in what does the distinctive character of the earlier mark lie?’  Only after that has been done can a proper assessment of the likelihood of confusion be carried out.”

 

His analysis at paragraph 22 has wrongly been cited as paragraph 40 of the decision in Kurt Geiger in a number of the subsequent decisions.  However, the misquoted paragraph 40, contained in the Decision, is consistent with paragraphs 38 and 39 of Kurt Geiger.  The misquote resulted in the omission of the example recorded in paragraph 40 of Kurt Geiger. It cannot be said that a specialist tribunal went awry because it didn’t have a simple example from one of the cases before it. It did not mislead the HO or lead him into error. 

[92]      In summary, Mr Tariq argued that the HO had correctly set out the law to be applied (which the appellant accepted). He had correctly applied the law in his assessment. The appellant does not identify any error in principle. The HO vouches all of the legal propositions relied upon, or Mr Tariq had done so in his submissions. So this was not a case where there was an error in principle. Bearing in mind the observation in Digipos, alleged errors in assessment do not amount to errors warranting interference. Everything done by the HO was within the scope of the multi-factorial assessment of the material before him. In these circumstances, the agreed test from REEF should be followed. The HO was an experienced hearing officer sitting in a specialist tribunal. Nothing the appellant has advanced has demonstrated that the HO was plainly wrong in that exercise. This appeal should be refused and all of the questions for the court answered in the negative.

 

Reply on behalf of the Appellant

[93]      In reply, Ms Pickard argued that if the HO had erred under the first ground of challenge, this was a stand-alone error.  It was not correct that the appellant identified no error of principle. Further, none of the evidence concerning purchases related to an in-store purchase. She maintained her argument that the HO was wrong to identify the word element as the dominant element of the marks. The words “vapouriz” and “vaporised” were non-distinctive. This fed through the rest of his analysis and comparison, because he did not give proper consideration to the only commonality which was the descriptive word (or part of the word) “vapouriz/vaporised”.  The only registrable element was the non-word element so it was wrong in principle to focus on the word element. Only the device elements of the two marks were distinctive.

 

Discussion

The Preliminary Issue: Nature of the Decision-Making by the HO

[94]      It is clear from the authorities cited, and indeed applying common sense, that the nature of the decision-making under challenge informs the grounds and intensity of the review by an appellate court.  There is, in my view, eminent sense in the observation of Robert Walker LJ in REEF (at para 26) that the degree of restraint by an appellate court to interfere with the trial judge’s evaluation of, and conclusions on, primary facts will depend upon several factors, including the nature of the evaluation required, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence.  No single standard will be appropriate in every case. 

[95]      The present context concerns the appellate function in respect of a decision of a hearing officer in a specialist jurisdiction, making determinations for the purpose of section 5(2)(b) of the TMA 1994.  On the spectrum of fact-finding discussed in some of the cases (eg REEF at paras 26 to 28), the decision of a hearing officer on such an issue involves a qualitative or evaluative assessment, requiring the application of his or her expertise and judgment.  The nature of the determination by a hearing officer has been described as a “multi-factorial” assessment, entailing a comparison and evaluation of the similarity of different marks, the similarity of goods and of other factors in order to reach a conclusion about the likelihood of confusion.  The parties have agreed that in respect of such decisions, “an appellate court should … show a reluctance, but not the highest degree of reluctance, to interfere, in the absence of a distinct and material error of principle”:  REEF at paragraph 28 and the end of principle 3 of the Agreed Legal Principles. The attitude is one of due respect, not diffidence.  I also note that a hearing officer has been described as having a “specialised experience and judgment” and that a hearing officer uses his or her “skill and experience”: see, eg, per Robert Walker LJ in BUD, referring to the ECJ in Lloyd Schuhfabrik Meyer & Co GmbH.  In the light of those observations, and in respect of the kind of assessment made in the Decision under challenge, I do not accept Ms Pickard’s suggestion that this is a bright-line determination admitting of a right or wrong answer.  The multi-factorial assessment made for the purpose of section 5(2)(b) of the TMA 1994 is not one essentially of conclusions of primary fact.  I prefer Mr Tariq’s submission regarding the approach of an appellate tribunal to a multi-factorial assessment under section 5(2) of the TMA 1994.  On the authorities, it involves a nuanced and evaluative assessment by persons exercising a specialised jurisdiction, after weighing up certain factors.  The authorities cited enjoin an appellate court to approach the review of such decisions with an appropriate degree of circumspection.  I propose to do so.

 

Rehearing vs Review:  Is there any Substantive Difference?

[96]      In relation to the character of the appeal from the HO to this court, I accept Mr Tariq’s submission that the reformulation in the English procedural rules, from a “rehearing” to a “review”, was a semantic change but not one of substance, and that the appeal in England has never entailed a rehearing in the fullest sense.  The English cases such as Dupont and Assicurazioni Generali SpA stress the continuity of approach in England, notwithstanding the change of formulation.  I also accept his submission that the differences in approach as between Scotland and England in respect of the form of appeal were historical, and not deliberate.  In any event, as a generality it would be unusual in Scotland for a hearing on an appeal to be a rehearing, in the fuller sense referred to in the English cases.  Terminological differences aside, in the context of the TMA 1994, the starting point in England (before the change introduced by CPR rule 52(11)) and in Scotland was the same.  Rule 55.19(10) of the RCS envisages that additional evidence may be heard, with the leave of the court.  The language of “rehearing” must be sufficiently broad to encompass that eventuality.  But, in the instant case, no additional evidence was led.  As noted above, the HO determined the application to him on the basis of the papers.  For the purpose of this appeal at least, in my view nothing turns on the differences in formulation in the respective procedural rules of the two jurisdictions, providing for a review (in England, under CPR rule 52.11(1)) and a ”rehearing” (in Scotland, in terms of rule 55.19(10) of the Rules).  Given that the TMA 1994 is of UK-wide application, it is desirable that the exercise of the appellate function by this court, if not its procedural rules, accords with that in England.  I express no view on the grounds on which this court might grant leave to allow evidence to be led.  That issue does not arise in this case. 

 

The Test of “Plainly Wrong”

[97]      This leaves the issue as to the test to be applied by an appellate court in Scotland in reviewing matters of fact of the kind contained in the Decision.  Ms Pickard argues that the test for interference is that the HO was “wrong” whereas Mr Tariq argues for “plainly wrong”.  On that issue there can be no doubt having regard, in particular, to the recent decision of the Supreme Court in Henderson and the observations of Lord Reed at paragraph 62 (quoted at para [58], above).  I accept Mr Tariq’s submissions on this point.  Ms Pickard does not rely on any identifiable error of the kind discussed by Lord Reed at paragraph 67 of Henderson (quoted at para [58], above).  In the absence of an identifiable error, this court may interfere with the HO’s Decision only if it has been demonstrated to be “plainly wrong” in the sense that it is one that “no reasonable judge could have reached”. 

[98]      Ms Pickard founds on the summary principles articulated by Mr Alexander QC in the recent case of TT Education Limited, especially at paragraph 52(v).  While his observation in this passage might be seen as starting down a divergent path (dropping “plainly” from the test of “plainly wrong”), I accept Mr Tariq’s submission that that observation has to be understood in the context of Mr Alexander QC’s discussion of CPR 52.11.  Mr Alexander QC began this part of his judgment by stating that his summary principles were not exhaustive.  It is significant, in my view, that Mr Alexander QC regarded his summary propositions to be consistent with the observations of Lord Reed (whom, per incuriam, he referred to as Lord Kerr), which observations Mr Alexander QC had set out at length at paragraph 44 of TT Education Limited.  Indeed, at paragraph 46 Mr Alexander QC expressly stated that he did not read Henderson as urging appellate tribunals to apply a lower degree of restraint.  From this, Mr Alexander QC drew the further conclusion that

“regardless of the precise formulation of principles, cases are sensitive to the context of their application and take into account the manner in which the original decision was reached and the relative ability of the appellate court to provide a better answer.  It also provides support for the proposition that even if an appellate tribunal is clear that it would not have taken the decision in question, it does not follow that the decision is wrong…”: see paragraph 47. 

 

Apart from summary principle (i), which restates the terms of CPR 52.11, principles (ii) to (vi) of paragraph 52 of TT Education Limited reflect the preponderance of the cases that appellate courts exercise an appropriate restraint.  Notwithstanding his dropping of the qualifier “plainly” in sub-paragraph (v), when that sub-paragraph is read in the context of his other principles, and consistently with the case-law he had just examined, the effect of dropping “plainly” may be less significant in practice than Ms Pickard contends for.  In other words, in the application of these different formulations there is unlikely to be a real difference in outcome between the two jurisdictions when an appellate court is reviewing the multi-factorial assessment of a hearing officer and in the absence of any identifiable error.  Therefore, there is in my view no material divergence in approach as between Scotland or England in relation to the nature of appeals from the decisions of hearing officers or the test to be applied to such appeals. 

[99]      In relation to Ms Pickard’s suggestion that in TT Education Limited Mr Alexander QC had recanted from his observations in Digipos, I do not accept this submission.  His observation in Digipos (set out at para [57], above), to the effect that criticisms that a hearing officer attributed too much or too little weight to certain factors are not errors of principle warranting interference, is wholly consistent with his observations in TT Education Limited.  Further, this observation in Digipos accords entirely with the nature of the multi-factorial assessment discussed in the case-law.  Accordingly, I proceed on the basis that an appeal against a multi-factorial assessment of the likelihood of confusion for the purposes of section 5(2) of the TMA 1994 can only succeed where a distinct error of principle is shown or where the decision is plainly wrong.

 

Comment on the Points of Difference in the Parties Agreed Legal Principles

[100]    As noted above, there was substantial, but not entire, agreement between the parties as to the legal principles to be applied.  To the extent that there was disagreement, which is represented by the underlined text (at para [16] above), I accept that the respondent’s further elaboration of the Agreed Legal Principles or the additional principles it proposes are all well-founded in law.  As I understood Ms Pickard’s position, she was not agreeing to these additional propositions, but she did not cite any case which contradicted these or held any of these to be wrong in law.  In the course of his submissions Mr Tariq vouched his proposed additional propositions from the case-law.  I do not need to repeat those references here, but it may assist if I comment on one or two of the principles that appeared most to divide the parties in their approach to the Decision under challenge in this appeal.  The additional text proposed at the end of principle 3 is taken from the end of paragraph 6 of Digipos.  It is helpful to see that in its fuller context.  The whole passage, from paragraphs 5 and 6 of that case, is as follows:

 

“B.  APPROACH TO THIS APPEAL

 

5.   It is important at the outset to bear in mind the nature of appeals of this kind.  It is clear from REEF Trade Mark [2003] RPC 5("REEF") and BUD Trade Mark [2003] RPC 25 ("BUD") that neither surprise at a Hearing Officer's conclusion nor a belief that he has reached the wrong decision suffice to justify interference by this court.  Before that is warranted, it is necessary for this court to be satisfied that there is a distinct and material error of principle in the decision in question or that the Hearing Officer was clearly wrong (REEF).  As Robert Walker LJ said: 

 

"…an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance to interfere in the absence of a distinct and material error of principle" (REEF, para.  28)

 

6.   This was reinforced in BUD, where the Court of Appeal made it clear that it preferred the approach of the appellate judge but nonetheless held that there was no error of principle justifying departure from the Hearing Officer's decision.  As Lord Hoffmann said in Biogen v. Medeva [1997] RPC 1at 45, appellate review of nuanced assessments requires an appellate court to be very cautious in differing from a judge's evaluation.  In the context of appeals from the Registrar relating to section 5(2)(b) of the Act, alleged errors that consist of wrongly assessing similarities between marks, attributing too much or too little discernment to the average consumer or giving too much or too little weight to certain factors in the multi-factorial global assessment are not errors of principle warranting interference.  I approach this appeal with that in mind.” (Emphasis by underlining added.)

 

Principles 2, 3 and 4 of the Agreed Legal Principles are vouched by this passage, though there are many other passages in the case-law that might also be identified as support for these principles.  The tenor of this passage is the relative restraint to be exercised by the appellate court, generally, but not necessarily, requiring a distinct and material error of principle.  This also accords with the nature of the appellate hearing, as discussed under the preliminary issue above.  What is clear is that it will generally not suffice to express disagreement about aspects of the qualitative judgment exercised by the hearing officer, eg in the guise of an assertion that the hearing officer gave too much or too little weight to certain factors.  In her submissions Ms Pickard made several submissions that fall into this category, eg, the assertions recorded at the end of paragraph [17], and in paragraphs [26] and [29], above.  Ms Pickard also contended that the HO was wrong to conclude that there was aural similarity or to conclude that the similarity resided in the principal word element of the two marks (ie vaporised and vapouriz).  Even if similar, she argued that the HO was wrong to assess them as having a high degree of aural similarity or a low degree of conceptual similarity.  She also asserted that, contrary to the HO’s findings, certain elements of the two marks were more distinctive than the HO allowed and that he had been wrong to dismiss these or he had placed insufficient weight on these: see, eg, paragraph [38], above. She contended that the word elements (vapouriz and vaporised) were descriptive.  All of these assertions contradict the HO’s own findings.  In essence, Ms Pickard was inviting the court to accept these assertions in place of the HO’s own determination of these matters. Having regard to the established legal principles and the nature of the multi-factorial assessment carried out by a hearing officer, Mr Tariq argues these are not permissible grounds of challenge.  I agree.  I also agree with Mr Tariq’s submissions that these criticisms do not constitute a relevant ground of challenge to the HO’s assessments of the distinctiveness or degree of similarity of the different elements of the respective marks. 

[101]    Turning to the appellant’s three grounds of challenge, there were two broad planks to the appellant’s attack on the HO’s Decision, namely:

(1)        that he erred in proceeding on the basis that aural features of the marks were relevant and, having done so, had erred in finding that there was aural similarity or he erred in the degree of similarity he found; and in a related challenge, that he had given undue weight to the aural characteristics of the marks and should have found other elements dominant (see questions 1(a) and 3(b) for the court); and

(2)        that he had artificially dissected the two marks and had failed to undertake a global assessment, or he had omitted to take into account what were said to be similarities between non-distinctive elements (see questions 2(a), (b) and 3(a) and (c) for the court). 

While there were other criticisms, these were the main challenges and there is a degree of overlap in the three grounds of challenge.  So, for example, aural elements would be of lesser relevance if purchases were all online.  Hence the challenge as to whether or not the HO had a basis for there being retail purchases and the dispute between the parties regarding the articulation of principle 7 of the Agreed Legal Principles (account to be taken of “all circumstances of use” vs “manner in which the goods are likely to be selected”) and the additional text proposed for principle 5(e).  Underlying this dispute was, as I understood it, the appellant’s desire to exclude a retail context, for the purpose of arguing for the exclusion, or at least diminution in the significance, of the aural element. 

[102]    It is not necessary to adjudicate between these two formulations, as it is clear from the case law that it is appropriate to examine “the objective conditions under which the marks may be present on the market” (New Look Ltd at para 49), and which may include in-store retail purchases which may be self-selected (in which case visual similarity may be relevant) or which may require to be requested of a seller (in which case aural similarities may be relevant).  In my view, it was relevant for the HO to consider this context and, as the CFI itself did in New Look Ltd (at para 50), to bring to bear judicial knowledge of the regulation of the product.

 

Ground of Challenge 1:  Characteristics of the Average Consumer and the Purchasing Process
[103]    As noted above, in her oral submissions Ms Pickard stepped back from the assertion (in the grounds of appeal) that the HO’s determination that the word elements of the two marks were aurally similar was erroneous.  She maintained her challenge on the basis that the HO had erred in attributing too much weight to aural similarities, as well as the related criticism, that the HO erred in not expressly attributing to the average consumer a knowledge of the use of vape and cognate words in the context of e-cigarettes. 

[104]    The starting point for the HO was to consider and determine the characteristics of the average consumer of e-cigarettes and the nature of purchasing process for the purposes of his assessment under section 5(2)(b) of TMA 1994.  It is accepted that the HO correctly set out the legal test to be applied in his consideration of the attributes of the average consumer for the products in question.  The appellant criticises this part of the HO’s decision on two bases:  first, that there was no evidence for word-of-mouth or retail purchases, and secondly, what was said to be the omission to take into account the average consumer’s knowledge of the widespread use of words like “vapour”. 

[105]    It is evident that the HO brought to bear his own knowledge as to the recent introduction of the regulation of the sale and advertising of e-cigarettes.  In the submissions before me, it was not suggested that this was factually inaccurate.  The HO also stated that he was aware that purchases could be made online as well as in retail outlets on high streets.  In any event, I would accept this as permissible, for the reasons advanced by Mr Tariq under reference to REEF (at para 39), namely that a hearing officer “was not obliged to disown all of his knowledge of the day-to-day world”.  Observations from other cases also support this approach: see eg JW Spears, to the effect that in the case of ordinary goods and services the court may put itself in the position of the average consumer (at para 36, quoting Interflora Inc & Anr v Marks & Spencer PLC [2014] EWCA Civ 1403) or New Look Ltd, in which the CFI proceeded on its own understanding of how in-store clothing purchases are made (paras 49 to 50).  It seems to me to be a short step from those facts, and an entirely reasonable inference, or one permissibly within judicial knowledge, that in the context of an in-store purchase of a regulated product, a consumer may well require to voice his request out loud to the retailer, as opposed to select the product himself from a shelf.  That process of reasoning does not, in my view, constitute an error on the part of the HO.  He was not proceeding impermissibly or without a proper basis in the evidence.  In addition, there is the material in the witness statement referred to by Mr Tariq.  Accordingly, the aural similarity between the main word elements of the appellant’s TM and the only word contained in the respondent’s TM is of some relevance, as the HO found.  In my view, he did not err in principle in determining that aural considerations were relevant or in concluding that there was a high degree of aural similarity.  Nor was the HO wrong, much less plainly wrong, in reaching that conclusion. I answer question 1(a) in the negative. 

[106]    In relation to the second criticism under the first ground of challenge, in my view, the appellant’s criticism is inconsistent with the dicta from cases such as REEF (at para 29) or Pegas (at para 19) concerning the hearing officer’s duty to give reasons.  On the basis of those authorities, a hearing officer does not require to be exhaustive in setting out the factors as the basis for his or her decision, or for every stage of the decision-making process.  While it is correct that in his discussion of the attributes of the average consumer, the HO did not make express reference to the evidence about the wide-spread use of “vapour” (and similar words) on websites and in relation to e-cigarettes, the HO did record this evidence (at paras 8 and 9 of the Decision);  he referred to the meaning of “vape” (at para 27);  and he referred to the “obvious significance” of the word “vapourise” to e-cigarettes (at para 31).  Further, he considered the meaning of these words (“to vape”, “vapourise”) in the course of comparing the marks as judged from the perspective of the average consumer.  On a fair reading of the Decision, the HO took into account the average consumer’s understanding of the meaning and likely use of these words.  His discussion of the significance of these at a later stage in his Decision would be otiose if he had not done so.  In my view, these criticisms of the Decision are ill-founded.  I answer question 1(b) in the negative.

 

Ground of Challenge 2:  Comparison of the Trade Marks

[107]    Again, the appellant accepts that the HO correctly set out the law to be applied to the comparison to be made of the two marks from the perspective of the average consumer.  The thrust of this attack was that the HO failed to conduct the comparison on the basis of the marks as a whole, but had artificially dissected them.  The argument was also presented, at times, on the footing that the HO had erred, simply in beginning his assessment by identifying and analysing the different components of each mark: see above, at paragraph [40].

[108]    This challenge reflects the difference between the parties in respect of the Agreed Legal Principles.  Mr Tariq contended that, for the purpose of the assessment of the likelihood of confusion, which must be assessed globally and taking into account all relevant factors, the assessment of the overall impression of a mark on the average consumer required an analysis of the components of a sign and of the relevant weight of these components in the perception of the average consumer: see the respondent’s proposed additional proposition at paragraph 5(c) of the Agreed Legal Principles at paragraph [16], above.  Ms Pickard did not accept this proposition.  I am persuaded, however, that there is ample warrant for this proposition in the case-law cited by Mr Tariq.  See, eg, the case of BUD at paragraphs 44 to 46 and Bimbo at paragraph 34. 

[109]    Indeed, in relation to a composite or complex mark, comprised of words and devices, it would be surprising if, as part of the multi-factorial assessment, these features were not considered individually and a view taken as to their respective degrees of distinctiveness (or otherwise) and their relative contribution to the overall impression of the mark under consideration.  It is in my view too prescriptive a reading of the cases to suggest that in doing so, or in beginning with an analysis of the component parts, the HO fell into error.  The cases have consistently rejected a formulaic approach, so long as the hearing officer does undertake a global assessment.  Further, I note that while it is accepted in principle 5(d) of the Agreed Legal Principles that similarities are “normally” assessed by reference to overall impressions of the two marks, there are circumstances where the comparison may be solely on the basis of the dominant element or elements.  In the light of the authorities cited to me, a comparison that begins with a consideration of the component parts of two complex marks does not instruct an error of law, although a comparison that did not progress beyond that to a global assessment would be such an error. 

[110]    In the judgment of the HO, the dominant features of the respondent’s TM were the plume device and the word “Vaporize”, and he further concluded that these two elements made a roughly equal contribution.  These criticisms of the evaluation made following the HO’s comparison of the two marks, do not in my view amount to an error in principle.  Rather they are, as Mr Tariq argued, no more than disagreements with the HO’s qualitative judgment on these matters, and which are not recognised grounds of review (see, eg, Bimbo and Fage).  In my view, the HO’s assessment is unimpeachable.

[111]    The HO concluded that the overall impression of the appellant’s TM was the word “Vaporized”.  Again, this conclusion is challenged on the basis that the HO had failed to take into account a number of individual elements of the two marks, (set out at paragraphs [77] and [79] to [81], above). On a fair reading of the Decision, however, it is apparent that he did have regard to these matters.  The fact that the HO has considered certain elements, but has not attributed to them the weight desired by the appellant, does not constitute a material error of principle, nor does it justify interference by an appellate court applying principle 3 of the Agreed Legal Principles.

[112]    On a fair reading of the HO’s Decision, the HO did analyse the component parts of the two marks; but he did not confine himself to a consideration of these features.  He did proceed to consider the overall impression of the two marks for the purpose of a global assessment.  Accordingly, in my view, there is no error in principle simply on the basis that the HO considered the component parts of the two marks in order to identify their distinctive and dominant elements and, having done so, attributed a relative weight to these in the perception of the target public: this is what is expressly enjoined by the ECJ in Bimbo (at para 34).  Nor am I persuaded that the HO thereafter failed to step back and consider the two marks globally, as contended by the appellant. I detect no error on his approach such as to justify any interference by this court even in the absence of an error in principle.

 

Ground of Challenge 3:  Likelihood of Confusion

[113]    As noted above, there is a degree of overlap in the criticisms advanced under the several grounds of appeal.  Again, the argument on behalf of the appellant is that the HO erred in focusing on the word elements of the two marks (said to be to the exclusion of other features), to have given undue weight to the word elements of the two marks (said to be descriptive), and to their aural similarity (because, it is said, visual similarity was the important factor). It is argued that, as a consequence, the HO erred at the stage when he was assessing the likelihood of confusion. In the context of her attack on the HO’s assessment of the likelihood of confusion of the two marks, it is argued that he failed to assess them by reference to the marks as a whole (question 3(a)) and to have given undue weight to aural similarity, to the detriment of what were said to be visual similarities (question 3(b)). It was also suggested, on the basis of Julius Samann Ltd, that the visual element was paramount.

[114]    In terms of the principles to be applied, I accept the correctness of principles 5 to 11 of the Agreed Legal Principles.  In coming to the conclusion that there was a likelihood of confusion, the HO referred to what Mr Tariq described as the “interdependency principle”, language taken from the case of L’Oreal (at para 34).  While Ms Pickard did not accept that terminology, see the underlined part of principle 5(h) of the Agreed Legal Principles, she did agree the underlying proposition, namely, that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks and vice versa.  Here, the goods are identical and, therefore, a lesser degree of similarity between the two marks is tolerated.

[115]    Turning first to the subject-matter of question 3(b) for the court, this echoes the criticism under the first ground of appeal, about the HO proceeding on the basis that some purchases, at least, would be in a retail context (as opposed to online), and in which there would be a spoken request for the product in question.  That approach rendered aural similarities relevant. It will be recalled that in coming to the view that he did, the HO took into account all of the circumstances of the use of the mark, and the manner in which the goods would be selected for purchase in a retail outlet.

[116]    For the purposes of the third ground of challenge, Ms Pickard argued that the HO had focussed unduly on the word element, by which the particular product would be requested, to the detriment of visual elements. In relation to the argument that there was undue focus on the words element of the two marks, I accept the rider proposed by the respondent to principle 8 of the Agreed Legal Principles, that in respect of a composite mark the average consumer was more likely to refer to it by the word element.  That proposition is vouched for in the case of Diemme-Industria Café Torrefatti SpA and, in any event, would appear to follow as a matter of common sense.  I also accept Mr Tariq’s submission about Julius Samann Ltd and his basis for distinguishing that case.  In my view, that case did not establish the primacy of visual elements as a matter of principle. In any event that case is readily distinguishable because of the unimportance of aural considerations in that case.  

[117]    In any event, a further difficulty with the contention in the latter part of question 3(b), about the greater importance of the visual elements, is that it is inconsistent with the HO’s determinations about the relative contribution of the visual and word elements of the two marks. The HO determined that one of the figurative elements of the respondent’s mark (the black rectangular device) had “no distinctive character” and that the flame/plume device made a broadly equal contribution to the mark’s distinctiveness as the word element “Vapouriz”: see paragraph 22 of the Decision, quoted above at paragraph [37].  In relation to the non-word element of the appellant’s TM, the HO concluded that the circular device of the appellant’s TM was “unlikely to make much (if any) contribution towards the overall impression the trade mark conveys” and that the average consumer was unlikely to note that the letter “V” was formed by the silhouettes of two e-cigarette devices, or to interpret the vertical stroke of the letter “d” as a plume of vapour: see at paragraph 24 of the Decision, quoted above, at paragraph [37].  Accordingly, in my view there is little force in the criticisms that the HO placed too much emphasis on the word element of each mark, or did so unduly and to the detriment of the visual elements. Nor do I accept the criticism that, by reason of his approach to these matters, there was a consequent failure on the part of the HO to assess the likelihood of confusion by reference to the marks as a whole.

[118]    I return to the appellant’s contention that (apart from the strapline in the appellant’s TM) the word elements of the two marks are descriptive. Ms Pickard contends that the HO’s focus was misplaced, on the basis that the words “Vaporised” or “Vapouriz” are descriptive and non-distinctive. As I understood her argument, if these words were descriptive, they could not be the dominant element (as is assumed in question 3(c)) and any comparison could only be in relation to the distinctive and figurative elements. If similarity resided only in the descriptive word elements (ie “the non-distinctive elements” in question 3(c)), so the argument ran, this was not capable of leading to likely confusion. Descriptive words cannot be dominant. On this approach, what was left for comparison were the figurative elements (which she argued were dissimilar) and the strapline. The barbed wire / soap example from paragraph 40 of Kurt Geiger illustrated this. Ms Pickard also relied on Starbucks (HK) Ltd v British Sky Broadcasting Group Plc  [2012] EWHC 3074 (Ch); [2013] FSR 29  in this chapter of her submissions. That case concerned a device mark with the word “NOW” and spikes like the rays of a sun projecting outwards. The word element was descriptive and only the figurative element could be distinctive. She adopted the description in that case of such a mark as being a “needlepoint” or “eggshell” mark. That, she said, was the same in this case.  

[119]    However, I accept Mr Tariq’s submission that this argument rests on a conflation of the concepts of distinctiveness and descriptiveness. Further, these conclusions are, in my view, precisely the kind of qualitative assessments within the province of a hearing officer and simple disagreement with which does not constitute a recognised ground of challenge.  In L’Oreal, for example, the ECJ deprecated (at para 48) an attack on the CFI’s determination that a particular element was dominant without an allegation of (as it was put) “distortion of the evidence” (ie without a challenge to a primary finding on a recognised ground). Findings of fact made by a hearing officer which are inconvenient to an appellant cannot be overcome by counter assertion.  The HO has not concluded that they were descriptive and the appellant makes no direct challenge to this finding.

[120]    On the authorities, it is said that if a word element is descriptive, then the public will not normally consider a descriptive element forming part of a complex mark to be dominant: see New Look Ltd at paragraph 34. In that case, the dominant element was the non-descriptive letters “NL”.  However, even if the word elements of the parties’ trade marks were descriptive to some degree, that is not conclusive. It is simply a factor that is likely to reduce the likelihood of confusion: see principle 11 of the Agreed Legal Principles. It may be an uncommon circumstance to have an earlier mark that is weak or of low inherent distinctiveness. In the instant case, the HO concluded that “the two components which dominate the overall impression of [the respondent’s TM] conveys one of low distinctive character as is the trade mark as a whole”: last bullet point of paragraph 33 of the decision, set out at paragraph [45] above. The most authoritative guidance in respect of such marks is to be found in L’Oreal, a decision of the ECJ. Ms Pickard did not suggest that that case was wrongly decided or superseded by other authoritative discussion in the case law. L’Oreal concerned a complex mark in which the word element was said to be descriptive and the earlier mark of only low distinctiveness. One of the arguments that the ECJ considered and rejected concerned the weight to be given to the weak distinctive character of the earlier mark. However, I accept the respondent’s proposed principle 12 of the Agreed Legal Principles.  In this context, Mr Tariq relied on the case of L’Oréal, as did the HO (at para 33 of the Decision), as authority for the proposition that the fact that the competing trade marks only coincide in relation to a component which has a weak distinctive character (such as the words “Vapouriz” and” Vaporized”) did not preclude a likelihood of confusion: see paragraphs 32 – 35 of the Decision, quoted in paragraph [45] above.  Accordingly, even if the word component of the respondent’s TM was of weak distinctive character, that does not preclude a finding of the likelihood of confusion. I do not accept that in his approach the HO failed to assess likelihood of confusion by reference to the whole marks.

[121]    Finally, in relation to the misquotation of Kurt Geiger, I accept Mr Tariq’s submission that this was of no moment and did not mislead the HO in his reasoning or vitiate the Decision. 

[122]    Having considered the parties’ arguments, and the cases cited, I am not persuaded that in respect of his assessment of the likelihood of confusion, there is any detectable error in principle on the part of the HO. Nor do I find that he was plainly wrong in the conclusion he reached. It follows that I answer questions 3(a), (b) and (c) in the negative. Neither party advanced a discrete argument in respect of question 4. (I have already addressed the test of “plainly wrong” under the preliminary issue, above.) Question 4 is of the character of an omnibus question. For completeness, I also answer it in the negative.

 

Disposal

[123]    It follows that the appellant’s appeal fails on all three of the grounds of challenge advanced.  I shall put the case out by order to consider the terms of the order.  I shall reserve all question of expenses meantime.  It only remains for me to thank Counsel for their very well presented oral and written submissions.