England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Rolls Building Fetter Lane, London, EC4A 1NL
		6 May 2015

MR JUSTICE ARNOLD :

Introduction

1. On 6 February 2013 the Appellant, Whyte and Mackay Ltd, filed UK Trade Mark Application No. 2651081 for the words JURA ORIGIN in respect of "Scotch whisky and Scotch whisky-based liqueurs produced in Scotland" in Class 33. I shall refer to this as "the Jura Mark".
2. The application was opposed by the Respondents, Origin Wine UK Ltd ("Origin Wine") and Dolce Co Invest Inc ("Dolce"), which are associated companies, on grounds raised under section 5(2)(b) of the Trade Marks Act 1994, which implements Article 5(1)(b) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) ("the Directive").
3. Origin Wine relied on two earlier UK Registered Trade Marks:

i) No. 2275969 for the word ORIGINS registered as of 22 July 2001 for "alcoholic beverages (except beers); wine" in Class 33; and

ii) No. 2307360 for the word ORIGIN registered as of 6 August 2002 for "wines; alcoholic beverages" in Class 33.

4. The Appellant required Origin Wine to prove use of these marks. It is common ground that Origin Wine only proved use of them in relation to "wine", and thus that they are to be treated for the purposes of the opposition as if they were only registered for those goods. It is also common ground that, although the marks are nearly identical, the second mark represents the Respondents' best case. I shall refer to this as "the Word Mark".
5. Dolce relied on its earlier Community Trade Mark No. 9065384 for the logo shown below registered as of 29 April 2010 for "alcoholic beverages (except beers), including wines" in Class 33. I shall refer to this as "the Logo Mark".

6. Both sides filed brief written evidence. As usual in such cases, there was no cross-examination. After a hearing at which the parties were represented by their respective trade mark attorneys, the oppositions were upheld by George Salthouse acting for the Registrar in a written decision dated 23 July 2014 (O/325/14).
7. The Appellant now appeals. The Appellant applied for permission to adduce further evidence in support of its appeal. I refused that application for the reasons given in an extempore judgment during the course of the hearing.

The hearing officer's decision

8. The hearing officer's decision may be summarised as follows. First, he set out the Trade Mark Registry's standard summary of the principal decisions of the Court of Justice of the European Union concerning Article 5(1)(b) of the Directive or its equivalents, namely Case C-251/95 SABEL BV v Puma AG [1997] ECR I-6191, Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Meyer Inc [1998] ECR I-5507, Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819, Case C-425/98 Marca Mode CV v Adidas AG [2000] ECR I-4861, Case C-3/03 Matrazen Concord GmbH v GmbGv Office for Harmonisation in the Internal Market [2004] ECR I-3657, Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 and Case C-334/05 Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS [2007] ECR I-4529:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f) and 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 case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and

(k) 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."

9. Secondly, he held (at [20]) that none of the Respondents' marks had acquired enhanced distinctiveness through use and that all of them had a "moderate level" of inherent distinctiveness for the goods for which they are registered. It is to be noted that he did not consider the meaning of the word "origin" in this context, nor did he explain why he considered that the Word Mark had the same level of inherent distinctiveness as the Logo Mark.
10. Thirdly, he held (at [21]) that the average consumer was the adult public at large, (at [22]) that the selection process for the goods in question was likely to be "predominantly a visual one", although "aural considerations" would "also play their part", and (at [22]) that the average consumer would pay a "reasonable level" of attention.
11. Fourthly, he held (at [26]) that the goods within the Appellant's specification were identical to "alcoholic beverages" in the specification of the Logo Mark and (at [28]) that the goods within the Appellant's specification had a "low degree" of similarity to "wine" in the specification of the Word Mark.
12. Fifthly, he assessed the comparison between the Jura Mark on the one hand and the Word and Logo Marks on the other hand as follows:

"35. From the evidence and the written and oral comments by the applicant it is clear that the applicant uses the brand JURA as its 'house' or 'lead' brand and then has a number of sub brands which designate the age of the whisky to be found inside the bottle and/or different blends. Ms Shah describes the word "origin" in the applicant's mark as descriptive. However, the average consumer would not immediately be aware that the term refers to a 10 year old scotch, they would have to be educated into this and there is no evidence that this is the case. Similarly, if the consumer were aware that JURA is an island in the Southern Inner Hebrides then the term 'origin' would suggest that the contents of the bottle upon which the mark is used was produced on the island. However, there is no evidence that consumers are aware of the existence of the Isle of Jura. To my mind, the dominant element in the applicant's mark must be the word JURA, however the word 'origin' is an independent and distinctive element. The two words only 'hang together' if one is educated into the existence of the Isle of Jura. The word 'origin' is clearly used as a sub-brand by the applicant as the applicant itself has acknowledged. In my opinion, although there are obvious differences between the marks of the two parties, the whole of the opponent's mark has been subsumed into the applicant's mark with a 'house' brand simply placed in front. The opponent's mark 2307360 is at least moderately similar to the mark in suit.

36. Moving onto consider the opponent's CTM 9065384 much the same contentions apply. The leaf device is eye catching but it will not form any part of aural or conceptual considerations, and leaf devices upon alcoholic beverage labels are commonplace, such that they largely go unnoticed. Even if the device element were seen as distinctive it cannot be verbalised. The only other difference is the presence of the word 'wine' in the opponent's mark. The applicant contended that use of this mark upon anything other than wine would be deceptive. However, this is not a line of defence open to them. I accept that it will cause the average consumer to pause if the mark is used on whisky however, it would probably be quickly rationalised by the consumer as being a reference to the producer 'Origin Wine' and not a description of the contents. I come to the conclusion that there is a moderate degree of similarity between the opponent's mark 9065384 and the mark in suit."

13. Sixthly, having cited from the decision of Iain Purvis QC sitting as the Appointed Person in LA Sugar Ltd v By Back Beat Inc (O/375/10), he assessed the likelihood of confusion as follows (at [39]):

"To my mind, when considering the opponents' marks 2307360 and 2275969 to the mark in suit despite the goods only having a low degree of similarity I believe that the marks are sufficiently similar that the average consumer would be directly confused. However, in case I am wrong on this it is also my view that, should the average consumer not mistake the marks for each other, the similarities in the marks and goods are such that the it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark. The situation is stronger in respect of the opponents' CTM 9065384 in that the goods are identical and the marks have a degree of similarity such that the average consumer would be directly confused. Again should the average consumer not mistake the marks for each other, the similarities in the marks and goods are such that the it would lead the average consumer into believing that the applicant and the opponent are commercially linked and they are likely to assume that the products produced under the application have a common origin to those produced under the earlier mark. …"

Grounds of appeal

14. The Appellant appeals on grounds which can be summarised as follows:

i) the hearing officer did not apply Medion v Thomson correctly;

ii) the hearing officer did not fully analyse the level of visual, aural and conceptual similarity between the respective pairs of marks;

iii) the hearing officer failed to consider whether the conceptual meaning of the word JURA in the Jura Mark outweighed the similarities between the respective marks due to the presence of the word ORIGIN;

iv) the hearing officer misapplied LA Sugar v By Back Beat; and

v) the hearing officer failed to take into account the principle that, where the only similarity between the respective marks consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion.

Approach to the appeal

15. The correct approach to an appeal of this kind is that stated by Robert Walker LJ (as he then was) in REEF Trade Mark [2002] EWCA Civ 763, [2003] RPC 5 at [28]:

"In such circumstances 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."

16. In the context of an appeal such as the present, which involves a multi-factorial evaluative assessment by the hearing officer, but not findings of fact made with the benefit of oral evidence, the subsequent observations of Lewison LJ in Fine & Country Ltd v Okotoks Ltd [2013] EWCA Civ 672, [2014] FSR 11 at [50] are perfectly consistent with this. So too are the observations of Baroness Hale of Richmond in AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49, [2008] 1 AC 678 at [30], which were approved by Sir John Dyson SCJ giving the judgment of the Supreme Court in MA (Somalia) v Secretary of State for the Home Department [2007] UKSC 49, [2011] 2 All ER 65 at [43].

First ground of appeal

17. I reviewed Medion v Thomson and six subsequent cases in Aveda Corp v Dabur India Ltd [2013] EWHC 589 (Ch), [2013] ETMR 33 at [19]-[38]. I shall take that analysis as read, and will not repeat it here. Since then, the CJEU has given judgment in Case C-591/12 P Bimbo SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:305]. The facts of that case and the reasoning of the General Court are summarised in Aveda v Dabur at [36]-[38]. The Court of Justice dismissed the applicant's appeal, holding:

"22.  The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (OHIM v Shaker EU:C:2007:333, paragraph 41).

23.       The overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker EU:C:2007:333, paragraphs 41 and 42, and Nestlé v OHIM EU:C:2007:539, paragraphs 42 and 43 and the case-law cited).

24.       In this connection, the Court of Justice has stated that it is possible that an earlier mark used by a third party in a composite sign that includes the name of the company of the third party retains an independent distinctive role in the composite sign. Accordingly, in order to establish the likelihood of confusion, it suffices that, on account of the earlier mark still having an independent distinctive role, the public attributes the origin of the goods or services covered by the composite sign to the owner of that mark (Case C-120/04 Medion EU:C:2005:594, paragraphs 30 and 36, and order in Case C-353/09 P Perfetti Van Melle v OHIM EU:C:2011:73, paragraph 36).

25.       None the less, a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (see, to that effect, order in Case C-23/09 P ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria EU:C:2010:35, paragraph 47; Becker v Harman International Industries EU:C:2010:368, paragraphs 37 and 38; and order in Perfetti Van Melle v OHIM EU:C:2011:73, paragraphs 36 and 37).

26.       In the present case, the General Court found, in paragraphs 79 and 81 of the judgment under appeal, that, even if the element 'bimbo' were dominant in the trade mark for which registration was sought, the 'doughnuts' element was not negligible in the overall impression produced by that trade mark and, accordingly, the 'doughnuts' element had to be taken into account in the comparison of the trade marks at issue.

27.       In paragraph 97 of that judgment, the General Court stated that, since the 'doughnuts' element is wholly meaningless for the relevant public, that element did not form, together with the other element of the sign, a unit having a different meaning as compared with the meaning of those elements taken separately. It accordingly found that the 'doughnuts' element still had an independent distinctive role in the trade mark for which registration was sought and had therefore to be taken into account in the global assessment of the likelihood of confusion.

28.       In paragraph 100 of the judgment under appeal, the General Court held that, in the light of all factors relevant to the case, the global assessment confirmed the Board of Appeal's conclusion that there was a likelihood of confusion.

29.       Accordingly, the General Court did not conclude that there was a likelihood of confusion merely from the finding that, in the trade mark applied for, the 'doughnuts' element has an independent distinctive role, but based its conclusion in that regard on a global assessment that included the different stages of the examination required under the case-law referred to in paragraphs 19 to 25 above, and in the course of which it took into account the factors of the case. It thus correctly applied Article 8(1)(b) of Regulation No 40/94.

…

 33. … in so far as Bimbo argues that the General Court disregarded the rule that a finding that one component of a composite sign has an independent distinctive role constitutes an exception, that must be duly substantiated, to the general rule that the consumer normally perceives a trade mark as a whole, it should be pointed out that the purpose of examining whether any of the components of a composite sign has an independent distinctive role is to determine which of those components will be perceived by the target public.

34.       Indeed, as the Advocate General observed in points 25 and 26 of his Opinion, 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.

35.       The determination of which components of a composite sign contribute to the overall impression made on the target public by that sign is to be undertaken before the global assessment of the likelihood of confusion of the signs at issue. Such an assessment must be based on the overall impression produced by the trade marks at issue, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, as has been stated in paragraph 21 above. Therefore, this does not involve an exception, that must be duly substantiated, to that general rule.

36.       Moreover, the individual assessment of each sign, as required by the settled case-law of the Court of Justice, must be made in the light of the particular circumstances of the case and cannot therefore be regarded as being subject to general presumptions. As the Advocate General observed in point 24 of his Opinion, it is clear, in particular, from the case-law subsequent to Medion (EU:C:2005:594), that the Court of Justice did not introduce, in that judgment, a derogation from the principles governing the assessment of the likelihood of confusion."

18. The judgment in Bimbo confirms that the principle established in Medion v Thomson is not confined to the situation where the composite trade mark for which registration is sought contains an element which is identical to an earlier trade mark, but extends to the situation where the composite mark contains an element which is similar to the earlier mark. More importantly for present purposes, it also confirms three other points.
19. The first is that the assessment of likelihood of confusion must be made by considering and comparing the respective marks - visually, aurally and conceptually - as a whole. In Medion v Thomson and subsequent case law, the Court of Justice has recognised that there are situations in which the average consumer, while perceiving a composite mark as a whole, will also perceive that it consists of two (or more) signs one (or more) of which has a distinctive significance which is independent of the significance of the whole, and thus may be confused as a result of the identity or similarity of that sign to the earlier mark.
20. The second point is that this principle can only apply in circumstances where the average consumer would perceive the relevant part of the composite mark to have distinctive significance independently of the whole. It does not apply where the average consumer would perceive the composite mark as a unit having a different meaning to the meanings of the separate components. That includes the situation where the meaning of one of the components is qualified by another component, as with a surname and a first name (e.g. BECKER and BARBARA BECKER).
21. The third point is that, even where an element of the composite mark which is identical or similar to the earlier trade mark has an independent distinctive role, it does not automatically follow that there is a likelihood of confusion. It remains necessary for the competent authority to carry out a global assessment taking into account all relevant factors.
22. Although the hearing officer cited Medion v Thomson in his decision (at [30]), he did not refer to either Aveda v Dabur or Bimbo. I presume that this is because neither case was cited to him.
23. When comparing the Jura Mark with the Word Mark, the hearing officer found (at [35]) that the word ORIGIN was an independent and distinctive element of the Jura Mark. Counsel for the Appellant did not suggest that he had misdirected himself in law in reaching that conclusion, but she submitted that his reasoning was contradictory and flawed for three linked reasons which individually or cumulatively amounted to an error of principle.
24. First, she submitted that the conclusion that the word ORIGIN was distinctive was inconsistent with the hearing officer's earlier finding that the Word Mark had only a moderate level of inherent distinctiveness. On the face of it, there is no inconsistency between these findings. Counsel argued, however, that, even though the hearing officer had said that the Word Mark had a moderate level of inherent distinctiveness, he could not have meant that, because he had also said that the Logo Mark had a moderate level of distinctiveness, yet the Logo Mark was plainly more distinctive than the Word Mark because of the inclusion of the vine-leaf device. Accordingly, she argued, what the hearing officer must have meant that the Word Mark had the minimum level of inherent distinctiveness required in order for it to be validly registered: see Case C-196/11 P Formula One Licensing BV v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2012:314].
25. Secondly, she submitted that the hearing officer had erred in his consideration of whether the average consumer would perceive the word ORIGIN in the context of the Jura Mark as being descriptive, or at least non-distinctive. He had considered whether it would be understood by the average consumer as being descriptive on the basis that it denoted a 10 year old single malt Scotch whisky, which was how the Appellant used it. Counsel accepted that he had correctly concluded that it would not be understood by the average consumer in that way, but argued that this was the wrong question. The right question was whether the average consumer would understand the word ORIGIN as referring descriptively, or at least non-distinctively, to the origin of the goods. Although the hearing officer had considered that possibility, he had only done so on the footing that the word JURA was understood geographically. He had not considered it on the footing that the word JURA was understood distinctively as denoting the Appellant's goods.
26. Thirdly, she submitted that the hearing officer had erred in his consideration of whether the average consumer would perceive JURA ORIGIN as a unit whose meaning was different to that of the constituent words. He had held that the words would only be perceived as a unit if the word JURA was understood geographically, but that there was "no evidence that consumers were aware of the existence of the Isle of Jura". She submitted that such evidence was not required, since Jura was part of Scotland, and hence its existence would inherently be likely to be known to consumers of Scotch whisky. In any event, the only alternative was that the word JURA would be understood distinctively as denoting the Appellant's goods, but that would not prevent the average consumer from perceiving JURA ORIGIN as a unit.
27. Counsel for the Respondents submitted that none of these arguments demonstrated an error of principle on the part of the hearing officer, as opposed to disagreement with his evaluation.
28. In my judgment there is an error of principle in the hearing officer's approach. The root problem with his analysis is that he failed at the outset to consider how the average consumer would understand the word ORIGIN in the context of the relevant goods. For this purpose, it makes no difference whether one is considering the Respondents' goods (wine in the case of the Word Mark) or the Appellant's goods (Scotch whisky and whisky-based liqueurs). Either way, in my judgment the average consumer would understand the word ORIGIN as referring to the origin of the goods, whether their geographical origin or their trade origin. This would be true in relation to most goods and services, but it is particularly true of both wine and Scotch whisky, where geographical origin is both an important factor in quality and frequently intimately associated with trade origin. It is follows that the word ORIGIN is inherently descriptive, or at least non-distinctive, for the goods in issue. As counsel for the Appellant rightly conceded, Formula One establishes that, since its validity has not been challenged, the Word Mark must nevertheless be deemed to have the minimum degree of distinctive character for it to be validly registered; but no more than that.
29. Furthermore, I agree with counsel for the Appellant that it cannot be correct to assess the Word Mark and the Logo Mark as having precisely the same level of distinctiveness. I can accept the hearing officer's assessment that the Logo Mark has a moderate level of distinctiveness, but this is due to contributions made by the vine-leaf device and, to a rather lesser extent, the typography. Those elements are absent from the Word Mark.
30. Turning to the Jura Mark, I will assume that the hearing officer was correct to conclude that the average consumer would not be aware that JURA was an island in Scotland (although I am bound to say that I have some doubts about this). It follows that, as the hearing officer appears also to have concluded, the average consumer would perceive the word JURA as being distinctive of the Appellant's goods. In those circumstances, I consider that the expression JURA ORIGIN would be understood by the average consumer as meaning that the goods originated from the producer called JURA: compare (to take a rather old-fashioned example) photographic film labelled KODAK ORIGIN. Thus the expression would be understood as a unit. Accordingly, the word ORIGIN does not have an independent distinctive role in the Jura Mark.
31. In fairness to the hearing officer, it is right to say that he was not assisted by the Appellant's trade mark attorney's argument before him that the word ORIGIN was descriptive of 10 year old single malt Scotch whisky, still less by her argument that it was used by the Appellant as a sub-brand (using the word ORIGIN as if it meant "original"). I have little doubt that he would have reached a different conclusion if he had had the benefit of the arguments presented by counsel for the Appellant before me.
32. So far as the comparison between the Jura Mark and the Logo Mark is concerned, the hearing officer held (at [36]) that "much the same contentions apply". Counsel for the Appellant submitted that this was wrong in law, since the Medion v Thompson principle could not apply where the earlier mark was itself a composite mark incorporating a distinctive device. It is not necessary for me to consider the correctness of that contention, since, even if the Medion v Thompson principle could apply, the conclusion that the word ORIGIN does not have an independent distinctive role in the Jura Mark would equally defeat its application here.

Second ground of appeal

33. Counsel for the Appellant submitted that the hearing officer had failed properly to analyse the level of visual, aural and similarity between the respective pairs of marks.
34. In the case of the comparison between the Jura Mark and the Word Mark, this submission is untenable. As the hearing officer rightly held (at [35]) "the whole of the opponent's mark has been subsumed into the applicant's mark with a 'house' brand simply placed in front". As he recognised, to that extent, there is visual, aural and conceptual identity between the respective marks, but otherwise they are different in all three respects.
35. Counsel for the Appellant is on stronger ground with regard to the comparison between the Jura Mark and the Logo Mark. As she pointed out, the hearing officer appears to have discounted the vine-leaf device in his assessment of the Logo Mark. She argued that his reasoning was contradictory and flawed for five reasons. First, he accepted that the vine-leaf device was "eye catching", yet contradicted himself by going on to say it would "go unnoticed". Secondly, he said that "leaf devices upon alcoholic beverages are commonplace" when there was no evidence of that (any more than there was evidence as to consumers' understanding of the meaning of the word JURA). Thirdly, it was not correct to say that the vine-leaf device had no conceptual relevance. It was conceptually relevant both because the use of vine leaves reinforced the message that this was the trade mark of a wine producer and because the globe shape formed by the leaves in the device lent colour to the notion of origin. Fourthly, while it was true that the vine-leaf device could not be verbalised, that did not justify ignoring it when making the visual and conceptual comparisons. Fifthly, his analysis of the impact of the word WINE was flawed because he had failed to give effect to the fact that it was descriptive for wine.
36. Counsel for the Respondents again submitted that none of these arguments demonstrated an error of principle on the part of the hearing officer, as opposed to disagreement with his evaluation.
37. In my judgment the first four points do amount to errors of principle. Accordingly, I conclude that the hearing officer failed properly to take account of the significance of the absence from the Jura Mark of anything resembling the vine-leaf device.
38. I do not accept the fifth point. The Logo Mark is registered for alcoholic beverages, which include whisky. As the hearing officer correctly appreciated, the word WINE is not descriptive of whisky.

Third ground of appeal

39. Counsel for the Appellant argued that the Appellant's evidence showed that JURA was a well-known trade mark for Scotch whisky and that the hearing officer should therefore have concluded that the presence of the word JURA in the Jura Mark represented a conceptual difference from the Respondents' marks which outweighed the similarities due to the presence of the word ORIGIN. In support of this submission, she relied upon the decision of the CJEU in Case C-234/06 Il Ponte Finanziaria v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2007] ECR I-7333.
40. I do not accept this argument, for two reasons. First, the Appellant's evidence does not establish that JURA was a well-known mark for Scotch whisky at the relevant date. It is merely evidence of use on a reasonably substantial scale. Secondly, and in any event, it is clear from the Court of Justice's case law that the principle that conceptual differences may outweigh visual and aural similarities applies where the relevant signs have conceptual meanings other than as trade marks for the relevant goods ("a clear and specific meaning, so that the public is capable of grasping it immediately"): see in particular. Case C-361/04 P Ruiz-Picasso v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-643 at [20], Case C-206/04 P Mühlens v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-2717 at [35], Case C-171/06 T.I.M.E. ART Uluslararasi Saat Ticareti ve dis Ticaret AS v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2007] ECR I-41 at [49], Il Ponte Finanziaria at [34] and Case C-16/06 P Les Editions Albert René Sarl v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2008] ECR I-10053 at [98].
41. It follows that I do not accept that, as counsel for the Appellant submitted the hearing officer should have concluded, the Jura Mark is dissimilar overall to both the Word Mark and the Logo Mark. On the contrary, there is a plain similarity in that all three marks include the word ORIGIN. Whether that similarity gives rise to a likelihood of confusion is a separate question.

Fourth ground of appeal

42. Counsel for the Appellant submitted the hearing officer had misapplied LA Sugar v By Back Beat. She argued that it could not possibly be said that consumers would directly confuse the respective marks with each other, as the hearing officer concluded, given that the Jura Mark contained the distinctive word JURA which was absent from the Word and Logo Marks. I agree with this; but I do not consider that this is a material error, for the hearing officer went on to conclude in the alternative that there would be "indirect" confusion (meaning confusion of a kind that does not involve mistaking one mark for another, as where the similarities give rise to a belief that there is some form of connection in the course of trade between the respective undertakings). I do not accept that he misapplied LA Sugar v By Back Beat in that regard.

Fifth ground of appeal

43. Counsel for the Appellant submitted that, in assessing whether there was a likelihood of confusion, the hearing officer failed to take into account the principle that, where the only similarity between the respective marks consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion. In support of this submission, she relied on the decision of the Grand Board of Appeal of OHIM in Case R 1462/2012-G Lifestyle Supplies VoF v Ultimate Nutrition Inc [2014] ETMR 27 at [59]-[62]. She also relied on the Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of Non-distinctive/weak Components) issued by the European Trade Mark and Design Network on 2 October 2014 as part of the Convergence Programme between the Trade Mark Offices of the European Union. This states:

"* When marks share an element with a low degree of distinctiveness, the assessment of LOC will focus on the impact of the non-coinciding components on the overall impression of the marks. It will take into account the similarities/differences and distinctiveness of the non-coinciding components.

* A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to LOC.

* However, there may be LOC if:

* the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar

* or the overall impression of the mark is highly similar or identical."

44. The hearing officer did not refer to Lifestyle Supplies, presumably because it was not cited to him. The Common Communication post-dates his decision. In my view both Lifestyle Supplies and the Common Communication need to be treated with a degree of circumspection. Lifestyle Supplies only has the authority of an OHIM Board of Appeal decision, while the Common Communication has no legal force at all. Some of the reasoning in Lifestyle Supplies (e.g. at [38]) is difficult to reconcile with Formula One. Moreover, it might be argued that neither Lifestyle Supplies nor the Common Communication entirely accurately reflects the case law of the General Court (for a recent example, see Case T-123/14 BSH Bosch under Siemens Haugeräte GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [E:T:2015:52] concerning the marks AQUAPERFECT and WATERPERFECT, although this might also be argued to fit within the exception recognised by the Common Communication). It is not necessary for present purposes to go further into these questions, for what can be said with confidence is that, if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion.
45. In my judgment the hearing officer did err in failing to apply this principle. In fairness to the hearing officer, it seems clear that this error arose because of the error he made at the earlier stage of his analysis, which, as discussed above, may be attributable to the way in which the case was argued before him.

Re-assessment of the likelihood of confusion

46. It follows from my previous conclusions that it is necessary for me to re-assess the likelihood of confusion. Other than the points discussed above, neither side challenged the hearing officer's assessments. Accordingly, taking the Respondents' case based on the Word Mark first, the factors to be taken into account may be summarised as follows:

i) the average consumer is the adult public at large, the selection process is predominantly, but not exclusively, visual and the average consumer would pay a reasonable level of attention;

ii) there is a low degree of similarity between the respective goods;

iii) the Word Mark has the minimum degree of distinctive character for it be validly registered;

iv) the word ORIGIN in the Jura Mark is identical to the Word Mark, but as discussed above it does not play an independent distinctive role in the Jura Mark and is of low distinctiveness; and

v) the word JURA has no counterpart in the Word Mark and is distinctive.

47. Factors (ii) to (v) all point against there being a likelihood of confusion, while factor (i) is neutral. Standing back and considering the matter overall, I do not consider that there is a likelihood of confusion.
48. Turning to the Respondents' case based on the Logo Mark, the factors to be taken into account may be summarised as follows:

i) the average consumer is the adult public at large, the selection process is predominantly, but not exclusively, visual and the average consumer would pay a reasonable level of attention;

ii) the respective goods are identical;

iii) the Logo Mark has a moderate level of distinctive character;

iv) the word ORIGIN in the Jura Mark is identical to the word ORIGIN in the Logo Mark, but it does not play an independent distinctive role in the Jura Mark and is of low distinctiveness;

v) the word JURA has no counterpart in the Logo Mark and is distinctive;

vi) the vine-leaf device has no counterpart in the Jura Mark and is distinctive; and

vii) the word WINE has no counterpart in the Jura Mark.

49. Factors (iv), (v) and (vi) all point against there being a likelihood of confusion, while factors (ii) and (iii) point towards a likelihood of confusion, and factors (i) and (vii) are neutral. Standing back and considering the matter overall, I do not consider that there is a likelihood of confusion

Conclusion

50. The appeal is allowed. The Jura Mark may proceed to registration.