England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice 7 Rolls Buildings Fetter Lane, London EC4A 1NL
		07/07/2016

Mr Justice Warren :

Introduction

1. This is an appeal by the Appellant/Opponent ("TripAdvisor") against the decision dated 15 December 2015 of Mr Oliver Morris acting as a Hearing Officer of the Trade Mark Registry ("the Decision"). Mr Morris held that the logo mark of the Respondent/Applicant ("Handsam") for 'handsam Schooltripsadvisor' should be registered for certain goods and services on the ground that there was no confusion with TripAdvisor's marks. He upheld the opposition in relation to other goods and services.
2. References to paragraph numbers in the format [n] are to the paragraphs of the Decision unless otherwise appears.
3. The relevant marks are set out in [1] and [3] and appear below. I will refer to the 'handsam Schooltripsadvisor' mark as "the Handsam mark".
TRIPADVISOR
4. Handsam applied for registration of the Handsam mark for the following goods and services:

Class 16: Magazines; Books; Leaflets; Printed guides; Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.

Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.

Class 41: Advisory services relating to education; Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.

Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.

5. Mr Morris' conclusions were as follows:

i) The opposition succeeded in respect of:

Class 16: Magazines; Books; Leaflets; Printed guides.

Class 41: Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.

ii) But the opposition failed in respect of:

Class 16: Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.

Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.

Class 41: Advisory services relating to education.

Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.

The principles applicable on appeal

6. The relevant applicable principles on this appeal are well known. Usually, it will be necessary to show that the hearing officer made a distinct and material error of principle in making his decision or that it was clearly wrong, that is to say a decision which no reasonable hearing officer could have reached. I must be circumspect in the way indicated in the case-law some of which I mention briefly:

i) Digipos Store Solutions Group Limited v. Digi International Inc, a decision of Daniel Alexander QC sitting as the appointed person. He referred to the need for a distinct and material error of principle in the decision in question or the need to show that the hearing officer was clearly wrong. He set out what Robert Walker LJ (as he then was) had said in Reef Trade Mark [2003] RPC 5 at [28]:

"…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."

7. Mr Alexander then went on to say this:

"….. As Lord Hoffmann said in Biogen v. Medeva [1997] RPC 1 at [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) 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."

8. And so an appeal is not, at least ordinarily, to be treated as a rehearing rather than a review.
9. Further, in Fine & Country Ltd v Okotoks Ltd [2014] FSR 11, Lewison LJ reiterated the great reluctance that appellate courts should have in overturning multi-factorial assessments made by first instance judges, saying this at [50]:

"The Court of Appeal is not here to retry the case. Our function is to review the judgment and order of the trial judge to see if it is wrong. If the judge has applied the wrong legal test, then it is our duty to say so. But in many cases the appellant's complaint is not that the judge has misdirected himself in law, but that he has incorrectly applied the right test. In the case of many of the Grounds of Appeal this is the position here. Many of the points which the judge was called upon to decide were essentially value judgments, or what in the current jargon are called multi-factorial assessments. An appeal court must be especially cautious about interfering with a trial judge's decisions of this kind…"

10. Lewison LJ was dealing with very different subject matter from the present case, but what he said applies with even greater force to an appeal from the registry to the High Court than it does to appeals from a lower court to the Court of Appeal.

Section 5 Trademarks Act 1994

11. The relevant parts of section 5 Trademarks Act 1994 (headed Relative grounds for refusal of registration) are as follows:

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

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

(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.

(3) A trade mark which—

(a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."

Preliminary points

12. The first preliminary point is this. Although the complaint does not feature in the Grounds of Appeal, Ms Cookson's skeleton argument describes the errors of principle which she asserts were made by Mr Morris, saying that "In essence, the Hearing Officer seems to have prejudged the appeal and determined its likely success at paragraph 10". What Mr Morris said at [10] was this:

"Whilst some of the other goods and services of the earlier mark may be closer (some are even identical), when one bears in mind the reputation of the earlier mark(s), the above term is likely to represent where the opponent has the greatest prospect of success. Of course, I will return to the other goods and services later and explain why the opposition would succeed or fail, as the case may be."

13. I fail to understand how that can be said to be prejudging anything. I disregard this pejorative, and incorrect, description of Mr Morris' full and careful reasoning (without myself prejudging whether that reasoning was flawed in some way).
14. The second preliminary point is that the Grounds of Appeal appear to introduce new evidence in the form of a more recent screen-shot of TripAdvisor's webpage. It is entirely unclear to me why this has been added. In any case, Mr Moss objects to its inclusion since it could easily have been adduced at the hearing. There is not, in any case, any application to me to allow this page in as new evidence. It is clearly new evidence, in spite of suggestions to the contrary in correspondence. I ignore it.

The Grounds of Appeal

15. There are, essentially, two grounds of appeal by TripAdvisor relating to the allowed goods and services alleging errors of law by Mr Morris in relation to section 5(2)(b) and section 5(3) Trade Marks Act 1994. In summary it is said that Mr Morris failed to conduct the necessary global assessment required by section 5(2) and that he incorrectly applied the case law when considering the link necessary to bring the opposition within section 5(3). There is no appeal against the decision rejecting claims of passing-off within section 5(4) and a claim of bad faith within section 3(6). There is no cross-appeal relating to the disallowed goods and services.

Section 5(2): no global assessment

16. It has not been altogether easy for me to appreciate what points are live or not. The Grounds of Appeal are quite extensive but Ms Cookson's skeleton argument does not address all of those Grounds and her oral submissions had a different focus and, likewise, did not address all of the Grounds of Appeal. I do not believe that I was actually taken to the Grounds of Appeal at the hearing, and only briefly to the skeleton argument. The focus of the oral hearing was rather different. I hope that, in what follows, I have covered everything which needs to be covered.
17. Ms Cookson's principal case is that Mr Morris carried out an improperly truncated global assessment in respect of the allowed goods and services, which resulted in relevant factors being entirely, omitted, not simply being given too little weight. As a result, she submits that I am entitled myself to conduct a new global assessment in relation to the allowed goods and services. The Grounds of Appeal identify the following issues:

i) Paragraph 3: Complaint is made that Mr Morris focused on class 41 advisory services relating to the organisation of field trips and visits. The result was that the comparison of services was made only in respect of these class 41 services, which has led to an incorrect conclusion. That last statement read in isolation is wrong: Ms Cookson herself acknowledges that the other goods and services were dealt with in [47] to [57] but her point here is that that no proper separate global assessment was carried out in respect of those services.

ii) Paragraphs 4 to 7: these identify factors which is said were not included in the global assessment namely:

a) Distinctiveness of the earlier mark. It is said that the distinctiveness of the earlier marks was not re-considered in relation to the identical goods. Ms Cookson acknowledges that Mr Morris concluded that the TRIPADVISOR mark has weak inherent distinctiveness in relation to its reputed travel services, but says that the level of in inherent distinctiveness in relation to services identical to or similar to the allowed services is higher. She contends that this was simply not taken into account. She relies on what Mr Morris said at [50] which appears to suggest that he saw a requirement for there to be a reputation for a likelihood of confusion to exist, even for identical services. (paragraph 4)

b) Fame, reputation relating to business trips (said to be common ground) and the reputation for class 35 activities and relevance of font and colour use and complementarity of services were relevant factors not taken into account. (paragraph 5)

c) Mr Morris mistakenly directed himself that no claim had been made concerning the use in colour, where such a claim appears in the TM7 in paragraph 2 of the statement of grounds. (paragraph 6)

d) All of the allowed goods and services are complementary to the goods and services in respect of which the opposition succeeded since Handsam intended, as a single economic unit, to offer them all. (paragraph 7). In particular, (i) the class 45 services are complementary to the class 41 services and they should fall together and (ii) teaching materials for education is complementary to the TripAdvisor core services as it provides extensive materials of value in the classroom for school trips, which are an integral part of education.

iii) Paragraph 8: It is contended that there are irrational findings in relation to class 35 where the services are identical. Mr Morris states in [48] that there is no reputation in the field of business service; but Ms Cookson says that it was common ground that the TRIPADVISOR reputation extended to the business trip market.

iv) Paragraph 9: "Advisory services relating to education would overlap with the core TripAdvisor services as described in the evidence as well as being identical to the general term education for which an earlier right is registered. The allowed class 45 services are identical to terms covered by the earlier right. The findings in paragraphs 49 and 50 [ie of the Decision] are irrational due to the discounting of fame and reputation as a factor in the global assessment".

v) Paragraph 10: "The class 16 global assessment/comparison of goods at paragraphs 56 - 57 is unreasonably arbitrary and the reasoning suggests that the hearing office is looking for a link between educational activities carried out by TripAdvisor and finding none, whereas the evidence shows there is a crossover and the hearing officer indeed appears to have acknowledged this elsewhere in his decision".

18. In her skeleton argument, Ms Cookson focuses on i) and ii). She addresses indirect confusion at paragraph 12. She notes that, at [12(f)], Mr Morris set out one of the principles identified in Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04. He said this:

"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")

19. Ms Cookson submits that, in spite of being aware of this principle and having been addressed about it at the hearing, Mr Morris "preferred and adopted the artificial concept of 'indirect confusion'…". She has provided in her skeleton argument an exegesis about why the concept of indirect confusion is incorrect, because it leads, she says, to an undue emphasis on the differences between marks, whereas the Directive commands that the likelihood of confusion is to be judged on the basis of similarities. This is why the CJEU in Medion recognised that there could be a likelihood of confusion because of non-dominant elements that nonetheless had independent distinctive character.
20. The CJEU in Sabel v Puma [1997] ECR I-6191; [1998] RPC 199, referred at [16] to the submission that the likelihood of association may arise in three sets of circumstances: (1) where the public confuses the sign and the mark in question (likelihood of direct confusion); (2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association); (3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense). The Court does not appear to have thought that the classification was irrelevant or unhelpful. Thus one finds this at [17] and [18] of the Judgment of the Court:

"17. It must therefore be determined whether, as those governments claim, Article 4(1)(b) can apply where there is no likelihood of direct or indirect confusion, but only a likelihood of association in the strict sense. Such an interpretation of the Directive is contested by both the United Kingdom Government and by the Commission.

18. In that connection, it is to be remembered that Article 4(1)(b) of the Directive is designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, 'there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark'. It follows from that wording that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope. The terms of the provision itself exclude its application where there is no likelihood of confusion on the part of the public."

21. The Court held that "the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of [Article 4(1)(b)]".
22. It is true that this classification was neither adopted nor rejected by the CJEU in terms. Lindsay J noted that truth in eSure Insurance Ltd v Direct Line Insurance plc [2007] EWHC 1557 (Ch), [2008] RPC 6, going on to say that "Narrower or wider classes might emerge but, for the moment, it suffices that confusion should be taken at least to include that form of direct and that form of indirect confusion". Here, at least, one finds a High Court Judge accepting that indirect confusion as described above is, at least, a form of confusion. It is a concept which finds currency more generally, as is reflected in the decision of the Appointed Person in LA Sugar Ltd v By Back Beat Inc Case BL-O/375/10 referred to by Mr Morris at [42].
23. In my judgment, Ms Cookson's criticism of Mr Morris in relation to indirect confusion is misplaced. He expressed the view, in [42], that the differences between the marks were ample to avoid the marks from being directly mistaken for one another. That is a view which he was entitled to take and there can, in my judgment, be no appeal from it. He went on to say that, if there is to be a positive finding under section 5(2)(b), then it will be on the basis of indirect confusion. Having rejected any direct confusion, he went on to consider indirect confusion as an alternative argument. The particular description of indirect confusion in Sabel v Puma set out above is very general. It is not easy, pace Lindsay J, to think of a wider classification which includes everything in that description but which is not also direct confusion. In any case, the principle set out in Medion on which Ms Cookson relies (the possibility of a likelihood of confusion because of non-dominant elements that nevertheless had an independent distinctive character) is perfectly captured by the combination of the descriptions of direct and indirect confusion in [16] of the Judgment in Sable v Puma.
24. Ms Cookson's next point in her skeleton argument is that Mr Morris did not take forward into the global assessment his own earlier findings. She says that, at [32], he had dismissed Handsam's argument that elements of the Handsam mark were wholly descriptive. That is not quite accurate. Mr Moss' submission, as recorded by Mr Morris, was that "because the words schooltripsadvisors were wholly descriptive, there was no real similarity". Nonetheless, it has to be said that Mr Morris clearly did not see that as a knockout blow. Instead, he went on to conduct a thorough and careful comparison of the marks in [33] to [37], considering the overall impression of each mark ([33] and [34]), visual similarity ([35]), aural similarity ([36]] and conceptual similarity ([37]).
25. As I have said, Ms Cookson's complaint is that Mr Morris did not take all of this through to his global analysis. She says that he ignored the TRIPADVISOR element because he insisted on reputation, even though such insistence is wrong. In that regard, she places reliance on Medion where the disposition was as follows:

"Article 5(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein."

26. Since, on her case, Mr Morris' global assessment was not correctly carried out, she invites me to infer a likelihood of confusion from the available evidence, including a number of elements set out in her skeleton argument.
27. The complaint which I have just referred to relates, I think, to paragraphs 4 and 5 of the Grounds of Appeal. But that complaint is all that is said and does not really address all the aspects of those paragraphs which might be raised. There is nothing in the part of the skeleton argument dealing with section 5(2) about paragraphs 3, 6 or 7 to 10 of the Grounds of Appeal.
28. In her oral submissions, Ms Cookson had something to say about the issue raised in paragraph 3 of the Grounds of Appeal. She said that Mr Morris' election to focus on one group of services was irrational and unhelpful. She suggested that Mr Morris had upheld the Handsam mark for books but not for magazines: that was irrational and showed on its face that the Decision must be flawed. This is a bad point. Mr Morris did no such thing. He held that the opposition succeeded in relation to both magazines and books: see [88]. He rejected the opposition under class 16 to printed manuals etc: see [89]. However, there is nothing prima facie irrational in rejecting books and magazines and printed guides generally but accepting printed manuals (in context for educational purposes) and other printed matter for educational/instructional purposes.
29. Without articulating the point in her oral submissions, it was clear that Ms Cookson was maintaining the position that Mr Morris was in error in considering certain of the class 41 services as a starting point because that would fail to reflect a global assessment. Even if he was not in error in doing so, she submits that Mr Morris was wrong to say that those services were different from TripAdvisor's services. But she gave me no reasoned basis for that assertion, merely repeating that he was led into error and thereby failed to carry out a structured, global, assessment. She further contends that Mr Morris went beyond what was open to him in saying what he did in [57]. This related only to Class 16: Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes. Mr Morris said this:

"I come to the view that the nature of these goods is not susceptible to providing the same information as the opponent's services, nor, indeed, the advice relating to organising field trips etc. Given the absence of such a link, I come to the view that there will be no likelihood of confusion, notwithstanding that the specification in the annex contains (non reputed) services (eg publication of electronic books) which have some similarity with these goods."

30. In my view, that was a decision which it was open to Mr Morris to make. I can see no error in it or the reasoning by which it was reached.
31. Ms Cookson's further oral submissions really come to this, that Mr Morris failed to take into account a number of factors (particularly in relation to class 35). The submissions add nothing new to the Grounds of Appeal and skeleton argument.
32. I reject Ms Cookson's complaints. It is important that the Decision is taken as a whole. It is not necessary for a hearing officer to repeat, at each relevant point of a decision, matters which have previously been identified and discussed. The fact that a particular issue has been considered in relation to one ground of opposition means that the hearing officer is aware of the point. It is unlikely that it will then have been overlooked in carrying out the global assessment which is required in relation to another ground of opposition. Mr Morris, as an experienced hearing officer, was fully conversant with the principles and was – or must be treated as being – well aware of the factors which he needed to take into account. It is accepted that he identified the correct principles. I should be very cautious (in accordance with the authorities which I have already mentioned) before interfering with his decision. In the present case, I am unpersuaded that Mr Morris has made any error of principle or that his decision is clearly wrong. In particular, I do not accept the suggestion that Mr Morris has failed to undertake a global assessment. In my view, he clearly did so and the attack on the Decision is in substance an attempt to challenge his value judgment by rearguing the case that was originally lost. This is not a case where I should interfere with his decision on the basis of TripAdvisor's section 5(2) attack.
33. I should, nonetheless, say a little more about each Ground of Appeal.
34. Paragraph 3: Selection of class 41 advisory services. I see nothing wrong in principle in the selection of a particular group of goods or services to test, in the first instance, whether there is a risk of confusion for that group. Given that there can be a risk of confusion in relation to some goods or services but not others, it is almost inevitable that a global assessment will need to be undertaken in relation to different groups or sets of goods or services. This is precisely what Mr Morris did.
35. Paragraph 4: Mr Morris had well in mind the distinctiveness of the earlier marks, and that the marks were well known (or famous, to use Ms Cookson's word). It is quite wrong to conclude from the fact that he did not mention distinctiveness again in relation to the identical goods that he did not have it in mind. Further, in saying what he did at [50], I do not read Mr Morris as saying that a relevant reputation is always necessary. He said what he did in the context of facts which were very different from the mere juxtaposition of the sort addressed in Medion and to which the holding set out at [25] above was addressed.
36. Paragraphs 5 and 6: Fame, reputation relating to business trips and reputation for class 35 activities; relevance of font and colour use and complementarity of services. Mr Morris was well aware of the TripAdvisor marks' use in colour. He recited relevant evidence in paragraphs 6, 7 and 8, referring to colour a number of times. In [41], he ruled out arguments based on similarity created by colour because no claim had been made under section 5(2)(b) that the earlier marks have a particular reputation in colour; he was, I consider, entitled to take this course. He also considered colour in the context of the section 5(3) opposition and passing-off. Similarly with font, he was well aware of the evidence about this and I see no reason to think that he did not take it into account. It is, in any case, very difficult to see that the font would, in the present case, have carried anything other than a very slight weight in the assessment. So far as business trips and class 35 are concerned, see [38] below.
37. Paragraph 7: allowed goods complementary to goods and services where opposition succeeded. This Ground of Appeal suggests that all of the allowed goods and services are complementary to the goods and services in respect of which the opposition succeeded as Handsam intended, as single economic operator to offer them all. Thus Handsam's class 45 services are said to be complementary to the class 41 services and they should fall together. So far as I am aware, this was not a point taken before Mr Morris. In any case, this point gets Ms Cookson nowhere if Mr Morris' decision in relation to class 41 is upheld since the opposition failed in relation to advisory services relating to education within class 41. Since, in my judgment, his decision is to be upheld, the complementarity argument falls away. But even if his decision on class 41 was wrong, the evidence (if there was any) said to show that the asserted complementarity existed was not discussed in the Decision nor was I shown it. I do not consider that the point would be open for Ms Cookson to run.
38. Paragraph 8: irrational findings in class 35. Paragraph 8 asserts that it was common ground that the TRIPADVISOR reputation extended to the business trips market. That, however, is not an accurate description of the common ground, which was that TripAdvisor's reputation for the TRIPADVISOR mark and the TripAdvisor owl logo is for the vacation and business trips market for (1) publishing third party information (including reviews) and (2) providing search services. There was no common ground that TripAdvisor had a reputation in for all aspects of business trips. There is no finding of fact, and I am not aware of any evidence, which would gainsay what Mr Morris said in [48] namely that TripAdvisor "has no reputation in the field of business advice or business management". There is nothing in this argument in my judgment.
39. It is also said in paragraph 8 that teaching materials for education are complementary to the TripAdvisor core services as it provides extensive materials of value in the classroom for school trips, which are an integral part of education. I confess to not understanding this Ground of Appeal. It was not enlarged upon in Ms Cookson's skeleton argument or oral submissions. In any case, the evidential base for the assertion that TripAdvisor provides extensive material of the sort mentioned is not known to me. Indeed, Mr Moss says that no such evidence was adduced. There is certainly no finding to that effect. I do not consider that there is anything in Ms Cookson's argument on this point either.
40. Paragraph 9: overlap of advisory services with core TripAdvisor services. The material was before Mr Morris. TripAdvisor does not like Mr Morris' decision. But I see no reason to think that Mr Morris did not take the overlap into account and I see no justification for interfering with his assessment by virtue of some alleged failure in this area. I do not consider that Mr Morris' findings in [49] and [50] are irrational whether due to the discounting of fame and reputation as a factor in the global assessment or otherwise.
41. Paragraph 10: unreasonably arbitrary assessment. Again, Mr Morris took into account the relevant factors. He attached a different weight to them than Ms Cookson would have liked, and reached a conclusion to which she objects. Mr Morris has not, however, made a distinct and material error of principle in making his decision nor is he clearly wrong. In accordance with the approach to appeals discussed above, I do not consider that I should interfere with his decision. I reject this Ground of Appeal.
42. For completeness, I should say that I think I have covered paragraphs 11 and 12 of the Grounds of Appeal in what I have already said. I do not consider that it can be said, on the basis of those paragraphs, that Mr Morris has made a distinct and material error of principle in making his decision or that it was clearly wrong. Again, I do not consider that I should interfere with his decision.
43. Accordingly, I reject the appeal in relation to section 5(2).

Section 5(3): finding of absence of link

44. This ground relates the link which must be shown, for the case to fall within section 5(3), between the subject mark and the earlier mark (that is to say between the Handsam mark and one or both of TripAdvisor's marks). It is accepted that Mr Morris identified the law correctly, referring in [63] and [64] to Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd (case C-408/01)("Adidas-Salomon") and Intel Corporation Inc v CPM (UK) Ltd (case C-252-07) ("Intel"). Ms Cookson submits, however, that Mr Morris then made, as she puts it in her skeleton argument, "an entirely unjustified step at paragraph 68 to determine that the link will only arise when the opposed sign is used in relation to particular goods and services". The evidence, it is said (although this is disputed), showed that all of the services provided by Handsam were provided through an internet portal identified by the Handsam mark; Mr Morris should therefore have followed Intel and made a global assessment about the existence of a link. The link is not a concept coupled only to the similarity of goods and services. He failed, according to Ms Cookson, to make that global assessment. Instead, he simply adopted, in addressing similarity, what he had said in relation to section 5(2)(b). But that requirement following the approach of Intel is different from the comparison which needs to be made for section 5(2) purposes.
45. It is also said that there is a clear error in [66] where Mr Morris stated that the allowed goods and services (essentially where he had found no likelihood of confusion) were quite different from the services for which TripAdvisor possessed a reputation.
46. As to the first of Ms Cookson's submissions, I should record here what Mr Morris actually said in [68]:

"It is worthwhile breaking the goods and services down to some extent because it is possible that a link may be found when certain goods and services are considered, but it does not follow that a link will always be made."

47. Mr Moss correctly submits that, to succeed on section 5(3) before Mr Morris, it was necessary to establish (i) reputation (ii) the necessary link and (iii) damages, unfair advantage or detriment. Factor (i) was clearly established, indeed it was accepted by Handsam: see [62]. Mr Morris addressed what was needed to demonstrate a link: see [63] and [64]. His decision was that there was no link in relation to the allowed goods and services: see [68] to [70].
48. Then, in [71] to [77] Mr Morris addressed the requirement in (iii) above. He decided in [73] to [75] that the requirement was satisfied in relation to the non-allowed goods and services so that TripAdvisor succeeded, under section 5(3), in relation to those goods and services. I note that he embarked on this discussion "in case I am wrong on my view that there would be an advantage gained by [Handsam] due to there being a likelihood of confusion", addressing the position as if there had been no likelihood of confusion.
49. He went on, in [75] and [76], to consider the position in relation to the allowed services. After noting in [75] that the opposition failed as, without the link (which he had decided did not exist), none of the heads of damage would arise. But in [76] he added this:

"….Even if a link had been made, I consider that it would have been such a fleeting one that there would be no consequence. I struggle to see, for the services in question, how any advantage will be gained and, furthermore, in relation to dilution, the earlier mark is just as capable as distinguishing its goods and services as it ever was. The final head of damage is tarnishing. This does not even get close to succeeding for the goods/services (or those already considered)…."

50. That, it seems to me, is more than an expression of opinion. It is, I consider, an alternative ground for his decision. Recognising the three elements necessary to bring the case within section 5(3), he addressed each of the elements. Failure to satisfy any one of those elements was enough to defeat TripAdvisor's case relying on that subsection. There has been no appeal against that finding. Indeed, it is difficult to see how there could sensibly be any disagreement with the conclusion let alone sufficient to show that Mr Morris had been guilty of a distinct and material error of principle.
51. Ms Cookson did not offer a satisfactory riposte to that. She maintained that what Mr Morris said was not part of his actual decision but was simply obiter observation. I do not agree.
52. I should, nonetheless, say something about Ms Cookson's submissions in relation to the link. Her case is put this way in her skeleton argument. The link, she correctly says, is something less than a likelihood of confusion. She notes that Mr Morris has quoted from Adidas-Salomon to direct himself to make a multi-factorial assessment of the link and goes on to correctly cite the factors suggested by Intel. However although setting out in [64] that one factor is "the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public", she submits that all that he in fact took into account in the reasoning given in [66] is just "the similarity of the services". Mr Morris did not apply his mind to the factor intended by the CJEU, which is intended to cover something entirely different. By mis-reading the Intel factor, he has actually considered a factor that the law requires be disregarded. He was clearly wrong.
53. She goes on to explain what the CJEU actually did mean, by citing [46] to [53] of the judgment in Intel. What she draws, in particular, from those paragraphs is that this factor requires an assessment of the relevant public of the TripAdvisor marks. This, I agree, is the public at large.
54. Ms Cookson then notes that the relevant section of the public as regards the Handsam mark could (where the services are so defined) be limited to the educational sector but for other goods and services (such as class 16 or certain elements of that class) could also be the public at large.
55. Ms Cookson suggests that Mr Morris had ample evidence as to the use of TripAdvisor by teachers and she says that it was common ground that those working in the educational sector accessed the TripAdvisor service.
56. Ms Cookson then submits that, in the context of an opposition, Mr Morris should have decided that there was no distinction to be made between the relevant sections of the public. Indeed he expressly stated in [25] that he must bear in mind that members of the educational sector are also members of the public. This is clearly not a case, she continues, where the public targeted by Handsam will never have been confronted with the TRIPADVISOR mark. There is, therefore, clear error of principle in the interpretation of this factor. The hearing officer could only reasonably arrive at a conclusion on the evidence before him that the link was established regardless of the goods and services.
57. Further, Ms Cookson contends that Mr Morris did not take into account the common ground that the TRIPADVISOR marks are famous. Even if there were some doubt that all of the applicant's targeted public would be aware of the TRIPADVISOR reputation and accordingly would make the link in the same way, regardless of what detailed services might be offered to them, fame brings the TRIPADVISOR marks into the category contemplated by [51] to [53] of the judgment in Intel, which is clearly linked to the preceding factor and can override it.
58. Ms Cookson's ground had shifted to some extent by the time of her oral submissions. The focus in her oral submissions was on how Mr Morris had dealt with similarity of services. He did so very briefly in [65] saying that he had already assessed the similarity of the marks at [29] to [37]. But this, Ms Cookson submits, is wrong and does not reflect what the CJEU was saying in Intel. I do not think that this is fair to Mr Morris. In [65], Mr Morris was dealing with the first of the factors identified in [41] of Intel (as to which see [62] below). I see no reason to think that the similarity between conflicting marks referred to in that first factor is any different from similarity in the context of confusion. Ms Cookson's submissions about reputation are more properly addressed, as in her skeleton argument, to the second of those factors.
59. A separate point made by Ms Cookson is that even if Mr Morris was correct to look at Handsam's various goods and services separately, he was wrong to say that they were different from TripAdvisor's goods and services. It is said that the choice of a particular goods and services was arbitrary and led to error. It meant that there was no structural, or global, assessment. She describes Mr Morris as having carried out only a cursory assessment and as having failed to take into account various details in the specification of TripAdvisor's word mark, especially under classes 35 and 45.
60. Before turning to more of Mr Moss' submissions, I should say that that [55] above is not quite right. First, it all depends what is meant by "ample". There was in fact very little evidence about the use of TripAdvisor by teachers. Secondly, any impression given by that submission that it was common ground that the TripAdvisor service was accessed by teachers to plan their field trips would be wrong. The common ground was actually as follows:

"A number of teachers and those working in the educational sector accessed the third party information published by [TripAdvisor] and used [TripAdvisor's] search services for vacation accommodations and vacation rentals at the relevant date."

61. As Mr Morris put it at [25],

"it is logical to assume that some school teachers will use TRIPADVISOR to look at reviews of relevant service providers when considering school trips. This is all the witnesses were saying (although one indicated that they did not do so)."

62. Mr Moss identifies the ground of appeal in relation to section 5(3) as appearing to be that the Mr Morris erred by holding that a link only arose in relation to certain of the goods and services covered by the Handsam mark. He submits that such an approach is clearly the correct approach. Indeed, the fact that a link may arise for some goods but not others was specifically envisaged in Intel as quoted by Mr Morris in [64] where he set out the following part from the Intel decision:

"41 The existence of such a link must be assessed globally…

42 Those factors include:

- the degree of similarity between the conflicting marks;

- the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;

…..."

63. It is true that Mr Morris does not set out the discussion of this factor later in the Intel judgment at [46] to [53]. He did not need to do so in his already long decision. He would obviously have been well aware of that discussion (and given the importance attached to it by Ms Cookson in her skeleton argument, it would be entirely unsurprising to find that she had cited it to him at the hearing).
64. I agree with Mr Moss on this point. In any case, what Mr Morris was doing in [68], it seems to me, was to break down the goods and services for separate consideration because, in doing so, a link might actually be established when certain goods and services are considered separately. Thus for the goods and services which were not allowed, the link was established: see [69]. But in relation to the allowed goods and services, the link was not established "when all relevant factors are considered": see [70]. It is inconceivable that Mr Morris did not have in mind the relevant factors referred to in Intel and which he had quoted shortly before in [64].
65. As I have already noted, the Grounds of Appeal go on to complain that the evidence showed that all the services which were provided by Handsam under the Handsam mark were made through the internet. Mr Moss contends that this is both wrong on the evidence and irrelevant. First, he says that the evidence did not show that the Handsam mark was only used through the internet. Second, the evidence did not need to address this because the proper comparison is between the signs, not how the Handsam mark has been used.
66. As to the first of those submissions, there is certainly no finding in the Decision. Ms Cookson did not take me to any evidence to that effect. I cannot take it as an established fact. As to the second of those submissions, I agree with Mr Moss, at least so far as the existence of any link is concerned.
67. Accordingly, Mr Morris was, I consider, entitled to consider the differences in the goods and services. In any event, similarity or otherwise of goods and services are only one factor in the Intel multi-factorial analysis. I ought therefore to be very cautious about disturbing Mr Morris' decision.
68. I do not attach any significance to the absence of any express mention in [66], or elsewhere in the relevant discussion by Mr Morris, of the 'nature' of the goods and services. It is intrinsic of any analysis of the similarity of goods and services that the very nature of those goods and services should be considered. It is simply inconceivable that a hearing officer of Mr Morris' experience would have failed to do so. He did not need to mention it expressly. Nor would I expect him to mention every detail of the specification (in particular under classes 35 and 45) on which Ms Cookson now relies. To carry out the global assessment which is required, Mr Morris needed to be aware of the specifications. He clearly was; indeed, he referred to them in the Decision and set them out in the Annex to it. But he did not need to explain the weight (or lack of weight) which he attributed to this factor.
69. In essence, it seems to me that TripAdvisor's appeal in relation to section 5(3) is an attempt to re-run the case before Mr Morris and to say that he has got his multi-factorial assessment - or his value judgment as Lewison LJ might prefer to call it – wrong. In my judgment, TripAdvisor has failed to show that Mr Morris was guilty of some distinct and material error of principle. There is no other good reason to interfere with Mr Morris' conclusion in relation to the absence of a link in respect of the allowed goods and services. That conclusion cannot, in my judgment, successfully be attacked.
70. In the light of the above, I reject the Ground of Appeal in respect of section 5(3) for two independent reasons:

i) First, Mr Morris effectively concluded (see [76]) that the use of the Handsam mark would not take unfair advantage of, or be detrimental to, the distinctive character or the repute of TripAdvisor's marks. Those were not his precise words, but it is clear that he was addressing the last part of section 5(3), making a finding that there was no detriment.

ii) Secondly, I am of the view that, in reaching his decision concerning the absence of the necessary link in relation to the allowed goods, Mr Morris did not make any distinct and material error of principle; further, he was not clearly wrong to reach the conclusion which he did, indeed, I would have reached the same view.

Disposition

71. TripAdvisor's appeal is dismissed.