Gap (ITM) Inc. v British American Group Ltd
| Jurisdiction | England & Wales |
| Judge | Mr John Baldwin |
| Judgment Date | 21 March 2016 |
| Neutral Citation | [2016] EWHC 599 (Ch) |
| Docket Number | Case No: Ch/2015/0492 |
| Court | Chancery Division |
| Date | 21 March 2016 |
[2016] EWHC 599 (Ch)
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
Mr John Baldwin QC
(sitting as a Judge of the Chancery Division)
Case No: Ch/2015/0492
Simon Malynicz QC (instructed by Stephenson Harwood LLP) for theAppellant
Jacqueline Reid (instructed by Foot Anstey LLP) for the Respondent
Hearing date: 15 th March 2016
JUDGMENT APPROVED
Mr John Baldwin QC:
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.
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]).
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.
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.
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.
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] F.S.R. 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] F.S.R. 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."
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.
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?
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.
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...
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