Envirotecnic v Gutterclear UK Ltd
| Jurisdiction | England & Wales |
| Judge | Mr John Baldwin |
| Judgment Date | 08 December 2015 |
| Neutral Citation | [2015] EWHC 3450 (Ch) |
| Docket Number | Case No: Ch/2015/0238 |
| Court | Chancery Division |
| Date | 08 December 2015 |
[2015] EWHC 3450 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
ON APPEAL FROM
THE REGISTRAR OF TRADE MARKS
Case No O-18015
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr John Baldwin QC
(sitting as a Judge of the Chancery Division)
Case No: Ch/2015/0238
Kelvin Jones (instructed by Direct Access) for the Appellant
Mr David Dixon, company director, spoke with the permission of the court on behalf of the Respondent
Hearing date: 19 th November 2015
This is an appeal against the decision of Hearing Officer Ms Ann Corbett, acting for the Registrar, dated 16 April 2015 in which, having reviewed the papers and without the parties having asked for a hearing, she dismissed an application pursuant to section 47 of the Trade Marks Act (the Act) for a declaration of invalidity of trade mark registration no 2656102 (the Trade Mark) in the name of Gutterclear UK Ltd. The Trade Mark is for this sign:
and it is registered as of 13 March 2013 in class 37 in respect of "Commercial, industrial & residential cleaning services. Cleaning equipment rental services." It is important for anyone reading this judgment in monochrome to be aware that the representation of the sign is in colour.
The application was based upon two grounds:
(i) Under section 5(2)(b) of the Act on the basis that the applicant has an earlier Community trade mark no 8475221 (the CTM) which is a similar mark and for similar goods or services and there is a likelihood of confusion between the respective marks;
(ii) Under section 3(6) of the Act on the basis that the Trade Mark was applied for in bad faith.
The CTM is for the sign: Gutter-Clear and it is registered as of 6 August 2009 in class 19 in respect of "Non-metal rain gutter filters in the nature of foam inserts for maintaining gutters and downspouts."
The Hearing Officer dismissed the application because she found that (a) there was no likelihood of either direct or indirect confusion ([39] of judgment) and (b) Gutterclear UK Ltd did not act in bad faith in filing its trade mark application but instead took a reasonable action that any business would take to preserve its position ([50] of judgment).
The following are the relevant statutory provisions:
s47. Grounds for invalidity of registration.
(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
…
(2) The registration of a trade mark may be declared invalid on the ground—
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), ( 2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
…
(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.
s3. Absolute grounds for refusal of registration.
…….
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
s5. Relative grounds for refusal of registration.
(1) ….
(2) A trade mark shall not be registered if because—
(a)…
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
s6. Meaning of "earlier trade mark".
(1) In this Act an "earlier trade mark" means—
(a) a registered trade mark, international trade mark (UK) or Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,
(b) a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), or
(c)….
The Respondent's business is solely concerned with clearing gutters and, accordingly, should the appeal succeed, there was no interest in relying on section 47(5) to save any part of the registration.
The relevant law is not controversial. The essential function of a trade mark is set out in Libertel C-104/01:
62. It is settled case law that the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or services to the consumer of end use by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see Canon, ¶28, and Case C-517/99 Merz & Krell [2001] E.C.R. I-6959, ¶22). A trade mark must distinguish the goods and services concerned as originating from a particular undertaking. In that connection, regard must be had both to the ordinary use of trade marks as a badge of origin in the sectors concerned and to the perception of the relevant public.
When considering the likelihood of confusion it is necessary to consider use of the Trade Mark in connection with gutter cleaning services and gutter cleaning equipment rental services, it being conceded that these were the services most similar to the goods for which the CTM is registered.
The factors to be considered in assessing whether or not there is a likelihood of confusion have been the subject of a number of decisions and have been repeated many times. No objection was taken to the summary set out by the Hearing Officer in [13] of her judgment:
13. The factors to be considered under this ground have been the subject of a large number of cases before the Courts. In determining whether there is a likelihood of confusion between the respective parties' marks, I look to certain principles which are gleaned from the following decisions of the EU courts: Sabel BV v Puma AG, Case C-251/95, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. Case C-342/97, Marca Mode CV v Adidas AG & Adidas Benelux BV, Case C-425/98, Matratzen Concord GmbH v OHIM, Case C-3/03, Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH, Case C-120/04, Shaker di L. Laudato & C. Sas v OHIM, Case C-334/05P and Bimbo SA v OHIM, Case C-591/12P.
The principles are:
(a) The likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;
(f) however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a great degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.
The correct approach to appeals from the Registrar was set out by Mr Alexander QC in Digipos Store Solutions v Digi International [2008] EWHC 3371 (Ch):
5. It is important at the outset to bear in mind the nature of appeals of this kind. It is clear from Reef Trade Mark [2003] RPC 5 ("Reef") and BUD Trade Mark [2003] RPC 25 ("BUD") that neither surprise at a Hearing Officer's conclusion nor a belief that he has reached the wrong decision suffice to justify interference by this court. Before that is warranted, it is necessary for this court to be satisfied that there is a distinct and material error of principle in the decision in question or that the Hearing Officer was clearly wrong (Reef). As Robert Walker LJ (as he then was) said:
"…an appellate court should in my view show a real reluctance, but...
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