England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
ON APPEAL FROM
THE REGISTRAR OF TRADE MARKS
Case No O-450-15, [2015] UKIntelP o45015

		Royal Courts of Justice, Rolls Building Fetter Lane, London, EC4A 1NL
		21 March 2016

Mr John Baldwin QC:

1. This is an appeal against the decision of Hearing Officer, Mark Bryant for the Registrar of Trade Marks, whereby he dismissed an opposition to the application to register "The GapTravel Guide" as a trade mark in respect of the services of Magazine Publishing in Class 41 (Case O-450-15). Although the opposition was based on a number of attacks, the appeal proceeded only on the basis in section 5(2)(b) of the Trade Marks Act and earlier Community Trade Mark no 11331345, which is the mark GAP in respect of a range of services in class 41 including Publication of electronic books and journals online; Writing of texts [other than publicity texts]; Publication of texts, other than publicity texts; Providing on-line electronic publications, not downloadable; and Publication of books.
2. It is common ground that this appeal takes place by way of review rather than a rehearing and that the appellate court should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle (Reef Trade Mark [2002] EWCA Civ 763 at [28]). Further it is important to remember that Hearing Officers of the Trade Marks Registry sit as a specialist tribunal and that it is probable that in understanding and applying the law in their specialist field the Tribunal will have got it right and their decisions should be respected unless it is clear they have misdirected themselves in law (AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49 at [30]).
3. Section 5(2)(b) of the Act is in these terms:

5 Relative grounds for refusal of registration.

(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.

4. Although GAP is a well-known mark in the clothing field, Mr Malynicz QC, counsel for the opponent, does not rely upon that reputation for the purposes of this appeal. Instead he relies upon the assumed reputation of unused marks arising from notional and fair use across the specification for which the mark is registered. This concept was explained (in an infringement case – but the principle is the same) by Jacob LJ in Reed Executive v Reed Business Information [2004] RPC 40:

79 .... In the case of Art.5.1(b) infringement the court must assume, even if it be not so, that the mark owner has a reputation and goodwill in his mark. In other words the court must assume that the mark has been in use and developed such a reputation and goodwill for the specification of goods or services.

80 Were this not so, there could never be Art.5.1(b) infringement of an unused registered mark. That would defeat one of the key purposes of trade mark registration—the conferment of protection in advance of use, before a reputation under the mark has been developed. For once there is a reputation most (probably all—I have never heard of one that does not) systems of law confer protection independently of registered trade marks by some sort of unfair competition rules. In the United Kingdom that is by the law of passing off.

81 The way one arrives at this facet of Art.5.1(b) infringement is via the word "likely". This implicitly directs attention to the future—which includes the assumption that the mark owner will put his mark into use if he has not done so yet. The kind of use contemplated when a mark is unused or minimally used must be that of "notional and fair" use—no other makes sense.

5. There was no dispute that this was the right approach. A similar approach is adopted in the Community Trade Mark system (T.I.M.E. ART v OHIM Case C-171/06 P), [2007] ETMR 38.
6. And it was common ground that the relevant principles to be applied when considering section 5(2)(b) were recently summarised by Kitchin LJ in Maier v Asos [2015] FSR 20 at [75] as follows:

75. ... The general approach to be adopted was explained by this court in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 at [51]–[52]. There we endorsed (at [52]) the following summary of the key principles developed by the Trade Marks Registry as being sufficient for the determination of many of the disputes coming before it:

52. …

(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;

(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."

76. To this should be added the further guidance provided by the Court of Justice in Canon [1999] FSR 332 at [29] that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion for the purposes of the provision."

7. In applying those principles, the correct approach is to consider a notional and fair use of the mark the subject of the application and, as here, where the earlier registered mark has not been used, a notional and fair use of that mark too, both uses in relation to the full range of goods and services within their respective specifications.
8. An important aspect of these principles is that the global assessment is considered through the eyes of the average consumer of the goods or services in question. There was no dispute about this but there was a dispute about whether or not the Hearing Officer was right in his identification of the average consumer in this case and was right in the way in which he carried out his comparison of the marks. Did he do it through the right eyes?
9. The Hearing Officer dealt with the identification of the average consumer in paragraph 32:

32) Mr Hicks [for the opponent] submitted that publishing services involve the act of making available to the public and, therefore, the relevant consumer is the general public. He further submitted that such consumers have a low degree of care and attention. I do not agree with these submissions. This is because the average consumer of publishing services will generally be businesses who require the publication of material. It is less likely that members of the general public will be regular consumers of such services, certainly when considering publication of magazines or journals that are not normally compiled by individuals. Secondly, the purchasing process is likely to be reasonably well considered and may involve a relatively expensive procurement of one-off or ongoing services.

10. Mr Malynicz criticised this conclusion of the Hearing Officer. He drew attention to the applicant's evidence which included statements to the effect that the applicant was using the mark applied for on its magazines and exhibited examples of that use. It is clear that the average consumer of those magazines comes from the general public. Miss Reid, on behalf of the applicant, submitted that there was an important legal difference between the consumer of publishing services and the consumer of the product of those services. She submitted that the former was likely to be a business, and the Hearing Officer was correct to so conclude, whereas the latter was a consumer of the product of the purchaser of the services. Whilst accepting that this latter was more likely to be a member of the general public, she pointed out that the application is for a registration in respect of services and not for goods which might be the product of those services.
11. To illustrate her point, Miss Reid gave the hypothetical example of the mark Red Bull registered for "can manufacturing services". She submitted that the average consumer of those services would not be drawn from the general public but might, for example, be a soft drinks manufacturer. She submitted that the fact that such a manufacturer may sell drinks in the cans to the general public does not have the consequence that the average consumer of the can manufacturing service is drawn from the general public.
12. Miss Reid may well be right in the example she gives. But the reason she is right is that the soft drinks manufacturer is not selling the cans to the general public, it is selling the drink within the cans. The cans are merely a disposable receptacle for the product which the consumer is buying.
13. Moreover, the consequence of Miss Reid's submission is that the applicant is not using its mark in relation to the services for which it seeks registration, although it clearly thinks that it is since its managing director said in evidence that it was so doing. Another consequence of Miss Reid's submission is that the Hearing Officer was partly mistaken when he summarised some of the evidence of the applicant in this way:

The applicant has been using its mark on its website since around 2 February 2011 and has featured as part of its domain name since 2008. The evidence at Annex C consists of copies of the front covers of the applicant's magazine, one of which is dated 2010 and features a stylised version of its mark. Use has varied over time, but its mark has never resembled the opponent's "blue square and white lettering form of the opponent's mark".

14. The law of trade marks should take some cognisance of what traders actually think and do. Indeed, the average consumer was created to strike the right balance between various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market (Interflora v Marks and Spencer [2014] EWCA Civ 1403, [113]).
15. In this case the applicant is carrying out the service of magazine publishing by producing and distributing magazines (the service for which it seeks trade mark protection) and there is a high degree of correspondence between the carrying out of that service and the magazines which are the end product of that service. I think that a conclusion that a consumer of the product of such a service is not also a consumer of the service is too narrow a perspective and does not accord with practical commerce. In my judgment the Hearing Officer was mistaken to conclude that the average consumer would generally be a business and that the purchasing process may involve a relatively expensive procurement of one-off or ongoing services.
16. In his decision, and in accordance with usual practice, the Hearing Officer first summarised the evidence submitted by the parties. He then set out the relevant section of the Act and went on to consider the similarity of the respective services. He concluded that the respective specifications cover identical services or ones which share a high level of similarity. Neither side appealed that conclusion.
17. Next the Hearing Officer considered the similarity of the marks. He concluded that the marks shared a low level of visual similarity, a low level of aural similarity and no conceptual similarity. Mr Malynicz submitted that the Hearing Officer made errors in all three of these conclusions, most strikingly in respect of the question of conceptual similarity, and that is the only one I need to deal with.
18. Mr Malynicz submitted that conceptual similarity is not an abstract notion but must be considered in the context of the assumed use of the respective marks and the perceptions of the average consumer. He submitted that the Hearing Officer's error emerges from paragraph 25 of the decision:

25) The opponent's mark consists of a single word, namely the word GAP. It is self evidently both the dominant and distinctive component. The applicant's mark consists of the four words "The GapTravel Guide". Despite the second and third words being conjoined, I agree with Ms Reid's submission that the use of a capital "T" at the start of the word "Travel" has the effect of the words "gap" and "travel" retaining their own identity within the mark. The word THE is merely the determiner donating the thing that follows, in this case GAP TRAVEL GUIDE (sic). At the hearing there were various submissions on the issue of whether or not the word GAP designated "gap year". I accept that there is no evidence that the word GAP is descriptive of GAP YEAR, but it is used by the applicant in a way that is likely to be perceived by the consumer as being an allusive indication to "gap year". This allusiveness exists because of the interplay between the word GAP and the word TRAVEL, consequently, the dominant and distinctive components of the mark are these two conjoined words that combine to create an allusive term. The word GUIDE does no more than describe the nature or subject of the services. The words GAP and TRAVEL combine to have more relative weight than the THE and GUIDE components of the mark.

19. Mr Malynicz made two points about this paragraph. First, with respect to conceptual similarity between the marks, he submitted that the correct contextual comparison was between the marks when used in relation to the service of travel guide publishing. He submitted that if Gap in the applicant's mark was allusive of "gap year" in the context of travel guide publishing, it was similarly so allusive in his client's mark when so used, and there was real conceptual similarity between the two marks.
20. Secondly, he submitted that the Hearing Officer was clearly mistaken when he concluded that GapTravel was likely to be perceived by the consumer as being an allusive indication to "gap year". He submitted that the mistake arose because of two errors. The first error was the Hearing Officer's reliance, when reaching his conclusion, on the applicant's actual use of the mark rather than on the notional use. That actual use was in evidence (and the Hearing Officer referred to it, see paragraph 11 above) and it is clear from the manner of use (the word 'gaptravel' is distinguished from the words 'the' and 'guide' by font type and size, position and colouring) and the context of use (magazines about student travel) that there is a clear allusion to student gap year activities.
21. The second error was the finding that the word GAP, as used in The GapTravel Guide, would be likely to be perceived by the average consumer as being an allusive indication to a "gap year" guide. Mr Malynicz submitted this finding was perverse in the absence of any evidence to that effect (and the Hearing Officer proceeded on the basis of no such evidence). He submitted in the alternative that the Hearing Officer had erroneously failed to take into account the circumstances and understanding of a significant proportion of the relevant public (comprised of that segment made up of persons having the perceptions and expectations of the average consumer (cf Interflora v Marks and Spencer [2014] EWCA Civ 1403 at [129])) who were completely unfamiliar with the experience of gap years of the kind enjoyed by students.
22. Ms Reid submitted that it was Mr Malynicz who was in error, not the Hearing Officer. She submitted that, when properly read, the Hearing Officer in paragraph 25 where he says "I accept that there is no evidence that the word GAP is descriptive of GAP YEAR, but it is used by the Applicant in a way that is likely to be perceived by the consumer as being an allusive indication to "gap year"." was referring to use of GAP in the applicant's trade mark and not to its use in actual trade (as shown by the evidence). She relied on the next sentence of paragraph 25 which refers to the allusiveness existing because of the interplay between the word GAP and the word TRAVEL and, consequently, the dominant and distinctive components of the mark are these two conjoined words that combine to create an allusive term.
23. The difficulty, to my mind, with Miss Reid's analysis is that the conjoining of the words will rarely be perceived in oral use of the mark and it is likely that it will not always be so perceived in written use. Furthermore, the applicant, in its actual use of the mark, does not rely merely on the conjoining of Gap and Travel to create the allusion. On the contrary, it distinguishes GapTravel very clearly from the rest of its mark by means of font type and size, colouring and position.
24. Mr Malynicz supplemented his submissions by reference to paragraph 34 of the decision which is in a section headed 'Distinctive character of the earlier trade mark' and reads as follows:

34) The opponent's mark consists of the single word GAP having an ordinary dictionary meaning that will be understood by most, if not all consumers. However, this meaning has no obvious relevance to publishing, therefore, the opponent's mark is endowed with a reasonably high level of inherent distinctive character.

25. He submitted that the paragraph was correct, but that if the word 'Gap' in the context of a business publishing travel guides carried an allusion to publications concerning travel during a gap year (as the Hearing Officer held in paragraph 25 of his decision) then it was not correct. He reminded me that normal and fair use of the opponent's mark included use in relation to the business of travel guide publishing, and that the product of such a business may well be called something like "Gap Travel Guide". He used this to support his submission that either the applicant's mark was allusive of travel in, or travel guides for, a gap year (and, if so, so was the opponent's when used in that context) and there was conceptual similarity between the marks when placed in the context of use (in which case paragraph 34 contained an error) or it was not (in which case paragraph 25 contained an error), and this vitiated the whole of the Hearing Officer's reasoning.
26. Mr Malynicz also complained of paragraphs 39 and 40 of the Hearing Officer's decision which are in these terms:

39) Mr Hicks also contended that the respective services were targeted at a different demographic and only a younger demographic than is targeted by the opponent will be familiar with the concept of a gap year. I am not persuaded by this. The concept of a "gap year" is long established and many consumers now beyond their teens and twenties will have experienced a gap year or considered undertaking one and, therefore, will also be alert to the allusion to the concept in the applicant's mark. Further, parents and other older relatives of young people undertaking or considering undertaking a gap year will also be familiar with the concept, as will most others who may not have any direct contact with someone taking or contemplating a gap year, but will be familiar with the concept. Consequently, I consider that the average consumers will be familiar with the concept of a gap year and will be alert to the allusion to such in the applicant's mark. Further, the courts have confirmed that marketing considerations are not relevant when considering likelihood of confusion, see for example, Devinlec Développement Innovation Leclerc SA v OHIM, Case C-171/06P. Therefore merely because the respective services are marketed to different demographics is not relevant to the issue of likelihood of confusion.

40) .... The average consumer is likely to be familiar with the concept of a gap year and therefore alert to the allusion of the concept created because of the presence of the word GAP in the applicant's mark, it follows that the average consumer will not make a connection with the opponent's mark. The presence of the word GAP will serve only to allude to the concept of a gap year. Therefore, the average consumer will make no connection with the opponent's mark, even taking account that the average consumer is the same and the respective services are identical.

27. The complaint again was in the Hearing Officer concluding, without any evidential support, that average consumers would be familiar with the concept of a gap year and would be alert to the allusion to such in the applicant's mark. He reminded me that very many people in this country have not been to university or know anything about student wiles, including gap years, and he asked me to take judicial notice of this fact. He submitted that there was a legitimate segment of persons, with the perceptions and expectations of the average consumer, in this category who could and should not be ignored.
28. Miss Reid protested vehemently and contended that if the opponent had wished to adduce evidence of this so-called fact, then it had an opportunity so to do and had not taken it. Mr Malynicz, on the other hand, contended that it was the applicant who was contending for a special meaning of Gap in the expression GapTravel which would militate against the likelihood of confusion and that the onus was on the applicant to adduce such evidence if it existed. In fact neither side sought to adduce evidence about any common understanding of a connection between the word Gap in connection with travel or travel guides and the notion of gap years.
29. Since the Hearing Officer is a specialist tribunal with much experience in relevant matters I am reluctant to disagree with his conclusion of fact in circumstances where there is no evidence one way or the other. But what is sauce for the goose is sauce for the gander. It seems to me that a necessary corollary of the Hearing Officer's conclusion is that the allusion which is offered by the applicant's mark is also offered by the opponent's mark, at least when considered in the context of use in respect of those parts of the opponent's services concerned with the publishing of travel guides and bearing in mind that use of the mark includes use in oral form (section 103(2) of the Act) when the conjoined aspect is unlikely to be noticed.
30. Thus I am satisfied that there is an inconsistency between the reasoning in paragraphs 25, 29, 34 and 39 of the decision and I have already concluded that the Hearing Officer made a mistake in the identification of the average consumer.
31. In these circumstances I can look at the matter afresh. I do so through the eyes of the average consumer as that expression has been explained in Interflora and bearing in mind the test in Maier set out in paragraph 6 above. I do not need to go again through the matters which were dealt with by the Hearing Officer or which I have dealt with above.
32. In my judgment the matter can be tested by a variation of an illustration which came up in argument. Consider a conversation between average consumers in which one utters the sentence "the gaptravel guides are really informative (or, are useless)" and another says "the gaptravel guide publishing services are the ones to go for (or, are rubbish)". The question is whether there is a real risk that a significant proportion of the public with the perceptions and expectations of the average consumer would think that praise/opprobrium was being given to the travel guides or travel guide publishing services of the opponent (i.e. under the GAP trade mark) or not.
33. Taking into account the assumed reputation of the opponent's mark (see paragraph 4 above) Mr Malynicz submitted that there was only one possible answer to that question - that there was such a risk. I agree. The reason is that guides and travel guides are common subject matter for magazine publishing services and the presence of the neologism or portmanteau GapTravel in the graphic representation of the applicant's mark is not sufficient to remove that likelihood of confusion. It is the word Gap which is the differentiating factor (whether or not, in the context of magazine publishing services related to travel, there is an allusion to gap year travel) between those guides or travel guides and those of some third party. In these circumstances the section 5(2)(b) objection to the application succeeds and the appeal must be allowed.