Cchg Limited T/a Vaporized Against Vapouriz Limited

JurisdictionScotland
JudgeLady Wolffe
Neutral Citation[2017] CSOH 100
Date12 July 2017
Docket NumberXA135/16
CourtCourt of Session
Published date12 July 2017

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OUTER HOUSE, COURT OF SESSION

[2017] CSOH 100

XA135/16

OPINION OF LADY WOLFFE

In the appeal under section 76 of the Trade Marks Act 1994 of

CCHG LIMITED t/a Vaporized

Appellant and Registered Proprietor

against

VAPOURIZ LIMITED

Respondent and Applicant

Appellant and Registered Proprietor: Pickard; MacRoberts LLP

Respondent and Applicant: Tariq; Burness Paull LLP

12 July 2017

Introduction

[1] This is an appeal against the decision of a hearing officer (“the HO”) of the Registrar of Trade Marks (“the Registrar”), dated 1 November 2016 (the “Decision”), that the appellant’s UK Trade Mark No 3085823 (“the appellant’s TM”) was invalid. That Decision followed on the respondent’s application to the Registrar, on 30 June 2015, to have the appellant’s TM declared invalid under the provisions of sections 5(2)(b) and 47(2)(a) of the Trade Marks Act 1994 (“the TMA 1994”). The application was filed on the basis that the appellant’s TM was confusingly similar to the respondent’s trade mark (Trade Mark No: 2605137) (“the respondent’s TM”) which had been registered earlier. Accordingly, in the Decision the appellant was referred to as the “Registered Proprietor” and the respondent was referred to as “the Applicant”.

Background

[2] The respondent’s TM was applied for on 20 December 2011 and entered into the register on 30 March 2012. The appellant’s TM was applied for on 12 December 2014 and entered into the register on 13 March 2015.

[3] In his Decision, and following contested proceedings, the HO allowed the respondent’s invalidity application. The HO concluded that the appellant’s TM was invalid because it was similar to the respondent’s TM which was earlier and had been registered in relation to identical goods such that there was a likelihood of confusion between the competing trade marks, contrary to section 5(2)(b) of the TMA 1994.

The Two Trade Marks

[4] The appellant’s TM is registered for “smokeless cigarette vaporizer pipes” in class 34 and is for the following device:

2017CSOH100 - TM1

[5] The HO’s decision was based on section 5(2)(b) of the TMA 1994, namely that there was a likelihood of confusion between the two trade marks given the identity of goods for which they were registered and the similarity between the marks. The respondent’s TM is as follows:

2017CSOH100 - TM2


The TMA 1994

[6] Section 47(2) the TMA 1994 states that the registration of a trade mark can be declared invalid where, among other things, it has been registered in breach of section 5(2)(b). Section 5(2)(b) states that:

“5. Relative grounds for refusal of registration

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

...

(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 of the part of the public, which includes the likelihood of association with the earlier trade mark

The respondent’s TM is the “earlier trade mark” for the purposes of section 5(2)(b).

[7] It is accepted that the goods and services in respect of which the two trade marks are registered are identical. The parties join issue, essentially, on whether the two marks are similar and whether there is a likelihood of confusion.

The Preliminary Issue: The Nature of this Appeal

[8] The TMA 1994 does not stipulate the form of appeal from a decision of a hearing officer. However, rule 55.19(10) of the Rules of the Court of Session (“the RCS”) provides as follows:

“An appeal under this rule shall be a rehearing and the evidence led on appeal shall be the same as that led before the Comptroller; and, except with the leave of the court, no further evidence shall be led.”

[9] So far as counsel’s researches have disclosed, this is the first appeal on the merits under the TMA 1994 made to this court. By contrast, there have been a considerable number of appeals brought before the English courts. The English procedural rule now applicable, being rule 52.11 of the Civil Procedure Rules (“the CPR”), stipulates that the form of hearing on an appeal is by way of a “review”. A preliminary issue arises as to the nature of the hearing before this court, and by implication, the scope of the appellate function, and whether the approach in England and Scotland is, or should be, the same.

Questions of Law for the Court

[10] Once the preliminary issue is resolved, the substantive questions for the court are as follows:-

1. Did the HO err in his characterisation of the average consumer by:

a. overstating the significance of the aural perception of the marks; and/or

b. failing to recognise that the average consumer would have been aware of the widespread use of descriptive words such as “vaporised” in relation to electronic cigarettes (“e-cigarettes”) in the UK?;

2. Did the HO err in law when comparing the marks in issue by:

a. artificially dissecting the device marks into their constituent components; and/or

b. failing to compare the marks as a whole?

3. Did the HO err in law in his assessment of the likelihood of confusion by:

a. failing to assess the likelihood of confusion by reference to the marks as a whole;

b. giving undue weight to the (erroneous) finding of aural similarity of the marks when the marks were device marks and, accordingly, the most important factor was the visual comparison; and/or

c. failing to take into account properly, or at all, that the similarity between the marks resided in their non-distinctive elements?

4. In all the circumstances, did the HO err in law, alternatively was he plainly wrong, in allowing the application for a declaration of invalidity against the appellant’s TM?

[11] In the course of her submissions, counsel for the appellant, Ms Pickard, modified question 3(b) by deleting “(erroneous)” and also, in question 4, substituting “principle” for “law”. For his part, counsel for the respondent, Mr Tariq, took issue with the characterisation of elements as “non-distinctive” in question 3(c). There was some discussion, too, as to whether the test stated in question 4, whether the HO was “plainly wrong” was itself correct. I consider this issue below, as part of the preliminary issue.

The Evidence before the HO

[12] The documentation placed before the HO, and which was the same documentation placed before the court in this appeal, was as follows:

1. The respondent’s application to invalidate the UK TM (“Form TM26”);

2. The appellant’s counterstatement (“Form TM8”), the fifth paragraph stated: Both marks have to be stylised to render them acceptable as trade marks, as the words Vapour and Vapourise are descriptive in relation to e-cigarettes and vapourising devices...”);

3. Witness statement of Paul Motion, solicitor at BTO solicitors, who was the then agents for the appellant. His witness statement dealt with the descriptive nature and widespread use of the words “vapour” and “vaporised”, under reference to the following materials:

(a) Online dictionary definitions of the words “vaporise” (to change into a vapour) and “vapourize” (Canadian spelling of “vaporize”):

(b) List of screenshots showing the UK websites that appellant had found using the terms “vapor”, “vapour” and “vapours”;

(c) UK websites for e-cigarette companies using the terms “vapour”, “vapours”, “vapour”, “vape”, “vaping”, “vapourway”, “vapourite”, “vapourized”, “vapourlicious”, and

(d) Google searches for “vapor”, “vapour” and “vaporised”

4. Witness statement of Brett Horth, who is the CEO of the respondent, and which set out details of the respondent’s business. It also referred to incidents of confusion. These are recorded at paragraphs 11 and 12 of the Decision;

5. Written submissions filed on behalf of appellant;

6. Written submissions filed on behalf of respondent; and

7. Further written submissions on behalf of the appellant.

[13] Save for one issue, concerning the inference the HO drew in respect of the significance of the aural similarities between the word elements of the two trade marks in the context of word-of-mouth or in-store retail purchases, there was no dispute as to the manner in which the HO dealt with the evidence. He heard no oral evidence or submissions. He therefore disposed of the application made to him on the papers. I have had the benefit of oral submissions and, it would appear, a much fuller citation of authorities, comprising some 37 authorities (including three additional ones produced in the course of the two-day hearing).

[14] The substance of Mr Motion’s evidence concerned what was said to be the widespread use of the word “vapour” (in various forms, spellings and tenses). From this, Ms Pickard contended that the average consumer of e-cigarettes would have been aware of the widespread use of terms such as “vapour” and “vaporised” (in alternate spellings) in relation to e-cigarettes, and would have been aware of the use of such terms on websites where e-cigarettes were being promoted and sold. She notes that this point was picked up on in the appellant’s further written submissions, where it was pointed out that the prefix “VAPO” and the word “VAPOUR” and derivatives thereof were very diluted, both on the register and in the marketplace.

[15] The substance of the respondent’s evidence was in respect of the asserted similarity between the two trade marks and included reference to two instances of confusion reported to, or spoken to, by Mr Horth from a trade customer. In the written submissions placed before the court it was noted that the appellant had submitted to the HO that this evidence post-dated the relevant date for the assessment of confusion, and in any event, that it did not prove that any consumer had been confused. While the HO recorded in detail these two instances of confusion, he does not appear to have placed any particular reliance on this evidence in his Decision. It is not necessary to set out any other passages of the evidence more fully.

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