England and Wales High Court (Chancery Division) Decisions

(i)  Under section 5(2)(b) of the Act on the basis that the applicant has an earlier Community trade mark no 8475221 (the CTM) which is a similar mark and for similar goods or services and there is a likelihood of confusion between the respective marks;

(ii)  Under section 3(6) of the Act on the basis that the Trade Mark was applied for in bad faith.

s47.   Grounds for invalidity of registration.

 (1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).

     ...

(2) The registration of a trade mark may be declared invalid on the ground—

(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or

(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,

unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.

...

(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.

s3.   Absolute grounds for refusal of registration.

          .......

(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.

s5.  Relative grounds for refusal of registration.

 (1) ....

(2 )  A trade mark shall not be registered if because—

         (a)...

         (b)   it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

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

s6.  Meaning of “earlier trade mark”.

 (1) In this Act an “earlier trade mark” means—

(a) a registered trade mark, international trade mark (UK) or Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,

(b) a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), or

(c)....

13. The factors to be considered under this ground have been the subject of a large number of cases before the Courts. In determining whether there is a likelihood of confusion between the respective parties’ marks, I look to certain principles which are gleaned from the following decisions of the EU courts: Sabel BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98, Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.

The principles are:

(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 be dominated by one or more of its components;

(f) however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a great 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;

(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.

The likelihood of confusion objection

25. As indicated above, cleaning services and the rental of cleaning equipment are services which may be bought by businesses or by the general public. Cleaning services may be highly specialised e.g. the deep cleaning of a hospital theatre or commercial kitchen or may be more general e.g. the cleaning of domestic carpets or windows. The purchasing process is equally wide, with the more specialised cleaning services likely to be purchased following e.g. pre-contract negotiation setting out the standards and timescale to be met whereas the more general are likely to be made with an eye to convenience. Even for the more general services such as gutter cleaning services, at least an average degree of care in their purchase is likely to be taken to ensure they meet the purchaser’s needs in terms of what work is to be done, when and by whom and at what cost. Rental services are also likely to be purchased with at least an average degree of care so as to ensure the customer rents the correct equipment and knows what ancillary materials he might need to purchase to suit the job which he intends to carry out and which are compatible with that equipment. The applicant’s goods are likely to be bought by self-selection from a display in store or online and again, will involve an average degree of care to ensure they are suitable for and fit his particular guttering and to establish how they are fitted. The respective goods and services are unlikely to be a purchase made on a daily basis but they are widely available and likely to come to the purchaser’s attention in ways that mean the visual considerations are of most relevance though I do not discount the fact that aural considerations come into play given that they may be subject of recommendations from others.

26. 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 them, bearing in mind their distinctive and dominant components. The 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.”

27. It would be wrong, therefore, artificially to dissect the trade marks, although, it is necessary to take into account the distinctive and dominant components of the marks and to give due weight to any other features which are not negligible and therefore contribute to the overall impressions created by the marks. For ease of reference, the marks to be compared are:

28. The applicant’s mark consists of the hyphenated words Gutter-Clear in title case, no part of which is highlighted in any way. Both words are in everyday use and have well-known meanings and each plays an equal role in the mark. It has no dominant elements and its distinctiveness rests in the whole. The registered proprietor’s mark is made up of a device (in green) of a leaf with raindrops on it followed by the word GUTTERCLEARUK presented in capitals letters in ordinary type face. Whilst presented as a single word, it naturally breaks down in the well-known component words and abbreviation GUTTER, CLEAR and UK, more so because each is presented in a different colour (black, blue, grey). Beneath the words is a partial reflection of them suggesting that the words and abbreviation themselves are standing in water. Whilst the leaf device will not be overlooked, it is the words GUTTERCLEARUK which form the dominant part of the mark both because of the proportion of the mark they form and because of the general principal that “words speak louder than devices”.

29. Despite the presence of the hyphen, as the word element of the registered proprietor’s mark begins with the same two words which make up the applicant’s mark, there are clear visual and aural similarities between them. The presence of the leaf device and abbreviation UK lead to clear visual differences between them. Whilst the leaf device has no affect aurally, the abbreviation UK does add an aural difference. The words Gutter Clear (whether hyphenated or otherwise separated or not) are in everyday language and will bring to mind something intended to assist in making or keeping guttering clear of something else. The non-distinctive abbreviation UK brings to mind either a UK based company or a company which operates throughout the UK. The leaf device brings to mind either a service to clear gutters of (amongst other things) leaves or may bring to mind an ecologically sound service. Whilst there are conceptual similarities between them, there are also clear conceptual differences between the respective marks.

38. Earlier in this decision I found:

• To the extent that the services of the registered proprietor are for (equipment for) cleaning guttering, any similarity with the applicant’s goods is extremely low. For all other services, there is no similarity;

• The average consumer of the goods and services is a member of the general public who will purchase them with at least an average degree of care;

• Whilst there are some visual, aural and conceptual similarities between the respective marks, there are also clear visual, aural and conceptual differences between them;

• The distinctiveness of the earlier trade mark rests in its whole. It is a mark of very low inherent distinctiveness which has not been shown to have been enhanced through its use.

Her conclusion is in §39:

39. Taking all matters into account and making a global comparison as I am required to do, I find that there is no likelihood of either direct confusion (where one mark is mistaken for the other) or indirect confusion (where the average consumer will assume that the registered proprietor’s goods are those of the applicant or some undertaking economically linked to them). I consider the differences between the marks outweigh the similarities and the (at best) extremely low degree of similarity between the respective goods and services and degree of care taken over the purchase of them are more than sufficient to preclude such a likelihood, even considering imperfect recollection. The objection based on section 5(2)(b) of the Act fails.

The bad faith objection