Low or no similarity between marks a matter of semantics – the UK RA case and a call to adopt an avenue of appeal to Appointed Persons under Australian trade marks practice?
It is no secret that decisions of Appointed Persons (AP) of the UKIPO occupy a special place in our hearts here at IP Whiteboard.
Who or what are Appointed Persons?
Following a first instance decision from a Hearing Officer of the UKIPO in a trade mark matter, there are two avenues of appeal: (a) the High Court and (b) the AP. A key downside (as is noted below, and depending on how you look at it) of the AP route is that an AP’s decision cannot be appealed.
Amanda Michaels of counsel, an AP herself (our note on her decision in the HOME MAID case can be seen here), and co-author of the excellent UK/EU text “A Practice Guide to Trade Mark Law” (see full details here), provides the following handy summary as to APs (with footnotes and statutory references removed):
“The APs are a panel of senior trade mark practitioners appointed by the Lord Chancellor … The vast majority of appeals from the Registry are made to the AP. The benefit of such appeals is that they are cheap (scale costs apply) in comparison to appeals to the High Court, and the APs are all trade mark specialists, but there is no appeal from their decisions. Where an appeal is made to the AP, he may refer it to the Court … if there is a point of general legal importance involved or if the parties or Registrar so request; the AP may refuse to refer a case where, for instance, that would be unfair to an impecunious appellant. … The possibility of referring the matter straight to the Court is important in cases which raise new points of law, since there is no appeal from the AP. However, the APs may refer questions directly to the CJEU in an appropriate case.
An appeal to the Court of the AP is not rehearing of the case, but only a review of the decision below. This means that findings of primary fact will not be disturbed unless the hearing officer made an error of principle or was plainly wrong on the evidence. Inferences from the primary facts may be reconsidered, but weight will be given to the hearing officer’s experience, and the appellate body will be reluctant to interfere in the absence of a real error of principle.
It is not uncommon for parties to adduce fresh evidence in support of their appeal, especially where the hearing officer considered the evidence to be inadequate or inconclusive. Significant evidence which has just come to light may be permitted to be filed on appeal. However, if the evidence could have been filed for the hearing in the Registry, it is much less likely to be allowed in. Relevant factors will be the reason for the late filing, the significance of the new evidence, and whether the other side will be prejudiced by admitting it, or could be compensated for it, usually by payment of costs.”
In August 2015, the Lord Chancellor announced 4 new AP appointments (here).
Another AP that we have featured before here at IP Whiteboard is Iain Purvis QC. He has a knack for quickly getting to the heart of matters with punchy decisions (which can be compared against the rather more voluminous style of Arnold J, as for example seen in the battle of the e logos reported here). He also sits as a Deputy Judge of the High Court (see this note from our London office here relating to his decision as regards the name CANARY WHARF, on appeal from the first instance decision which we reported here).
Mr Purvis QC has also developed somewhat of a reputation as an over-turner of earlier decisions (see our post on the Happy Quiche and Happy Sandwiches cases here). This is notable given the threshold on appeal as noted above. A mere difference in opinion between the Hearing Officer and the Appointed Person is not enough (for a practical example of the difference this might make, see the Digipos decision here). There must be an error of principle or the decision must be plainly wrong. This can be compared against appeals to the Federal Court from decisions of Australian delegates of the Registrar, which are by way of a re-hearing (and, for that matter, will not necessarily be heard by a judge with trade mark experience).
We already have a decision from Mr Purvis QC in January 2016, and it does not disappoint. This time, as with the CANARY WHARF case, the Hearing Officer’s decision was upheld.
The RA case
The Royal Academy of the Arts applied to register its RA mark (below) in respect of a wide range of goods and services.
The application was opposed by Errea’ Sport S.P.A. on the basis of its RA logo (below) covering overlapping goods and services.
The opposition was initially rejected by a Hearing Officer of the UKIPO, on the basis of the visual differences:
“Although the marks are aurally identical, and the goods and services are either identical or highly similar, both of which are factors weighing in the opponent’s favour, there is one factor in particular which weighs strongly against the opponent, namely, my finding that the marks are not visually similar. This is of particular importance in the global assessment of the likelihood of confusion given that the purchasing act is likely to be primarily visual for all of the goods or services in issue.”
The decision of Mr Purvis QC
Errea appealed to the Appointed Person. It submitted that it was irrational for the Hearing Officer to have held that there was no visual similarity between the marks “when one comprised the letters RA and the other would be understood as conveying the idea of the letters RA, albeit in a highly stylised way”. In such circumstances, it was submitted that the Hearing Officer should have found at least a low degree of similarity. The finding of no similarity was an error of principle.
Mr Purvis QC was having none of this. His findings as to the difference between low and no visual similarity, and whether two representations of the same thing must necessarily be visually similar, were succinctly stated as follows (these comprise the bulk of the substance of the decision, and are worth noting in full):
“First of all, it seems to me to be a matter of semantics rather than substance. There is no doubt that the Hearing Officer was proceeding on the basis that the average consumer would understand the letters RA to be conveyed by the earlier mark. Indeed she makes the point herself on more than one occasion. When she states that there is no visual similarity between the marks, she cannot therefore be taken to have forgotten this point. Similarly, she cannot be taken to have forgotten it when considering the overall ‘global’ question of whether the average consumer is likely to be confused.
Secondly, the difference between ‘no visual similarity’ and ‘a low degree of visual similarity’ is not only impossible to define but quite subjective. It is hard to imagine a case in which the spread of reasonable opinions about visual similarity could not cover both of these characterisations. This is not, therefore, fertile ground upon which to base an alleged error of principle.
Thirdly, I do not have any difficulty with the notion … that two representations of the same thing may have no visual similarity. In the world of art, the visual representation of a horse in Picasso’s Guernica has little or nothing in common with the visual representation of a horse in one of George Stubbs’ portraits. I do not think it unreasonable to say that they have no visual similarity, whilst having some limited conceptual similarity (they are both paintings of horses).”
There was no error of principle by the Hearing Officer.
Errea also sought to rely on a separate ground, namely that the decision of the Hearing Officer was clearly wrong, on the basis that the aural identity between the marks meant that there was bound to be confusion. However, Errea did not include that point in its Grounds of Appeal and did not seek to amend its Grounds of Appeal. Mr Purvis QC did not have to consider the ground, but went on to find in obiter that it did not have merit:
“This argument seems to me to fly in the face of the necessary ‘global’ assessment, bearing in mind the visual, conceptual and aural similarities, which the tribunal must carry out. Particularly in the case of an earlier mark which is a heavily stylised device mark, taking the aural similarities alone tends to ignore the real substance and distinctive character of the mark and is likely to lead to an erroneous result.”
The appeal was rejected.
Those used to the rather formulaic approach from OHIM’s Boards of Appeal and the General Court in characterising marks as having “low” levels of visual similarity and then going on to find that the marks are likely to be confused for one another will see the RA decision as a breath of fresh air.
At a practical level, APs clearly play a valuable role in the functioning of the UK trade mark system. Part of this is bringing to bear their experience of trade mark matters through years of practice (whether in private practice, or at the bar or on the bench). Practitioners will be well aware that trade mark law is a world of its own, with nuance layered upon nuance. Having appellate decisions considered specifically by experts in the field can only help in developing a rational and predictable jurisprudence, to the benefit of business and the consuming public, and at a cost lower than appeals to the Federal Court (or the Federal Circuit Court).