OAO "Alfa-Bank" v Alpha Bank A.E.

Hearing dates: 13 th July 2011

INTRODUCTION

This is an appeal from the Decision, dated 25 ^th March 2011, of Mr Mark Bryant sitting as Hearing Officer in the UK IPO in opposition proceedings arising out of an application by the Appellant OAO Alfa-Bank for registration of the trade mark shown below in respect of financial services under Class 36. The opponent, and Respondent to this appeal, is Alpha Bank AE. Its opposition is based upon sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 ("the Act"). The Respondent succeeded under the first and third of those provisions, but not the second.

Section 5(2)(b) of the Act provides that a trade mark shall not be registered if because:

"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."

Section 6(A) of the Act provides, so far as is relevant, as follows:

"(1) This section applies where—

(a) an application for registration of a trade mark has been published,

(b) there is an earlier trade mark in relation to which the conditions set out in section 5(1), ( 2) or (3) obtain, and

(c) the registration procedure for the earlier trade mark was completed before the start of the period of five years ending with the date of publication.

(2) In opposition proceedings, the registrar shall not refuse to register the trade mark by reason of the earlier trade mark unless the use conditions are met.

(3) The use conditions are met if—

(a) within the period of five years ending with the date of publication of the application the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with his consent in relation to the goods or services for which it is registered, or

…

(4) For these purposes—

(a) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and

(b) …

…

(6) Where an earlier trade mark satisfies the use conditions in respect of some only of the goods or services for which it is registered, it shall be treated for the purposes of this section as if it were registered only in respect of those goods or services."

On 8 ^th May 1987 the Respondent filed an application for registration of its earlier mark "ALPHA" in respect of insurance and financial services in Class 36. Its mark was registered on 24 ^th July 1992. Accordingly, the Respondent was required to satisfy the use conditions in section 6A in respect of its earlier mark, in order to make good its opposition under section 5(2). Most of the argument before the Hearing Officer, and all the argument on this appeal, was directed to the following three issues:

(1) whether the Respondent's use altered the distinctive character of the mark in the form in which it had been registered: (the distinctive character issue);

(2) the appropriate specification of the services for which the Respondent's earlier mark should be treated as having been registered pursuant to section 6A(6) (the specification issue); and

(3) the question whether, in the light of the answer to the second issue, there was displayed a sufficient likelihood of confusion (the confusion issue).

The approach of this court to appeals from the Trade Marks Registry is now well settled. The appeal is a review rather than a rehearing. The appellant must satisfy the court either that there is a distinct and material error of principle in the decision of the Hearing Officer, or that he was clearly wrong. As Robert Walker LJ said in Re Reef Trade Mark [2003] RPC 101, at paragraph 28:

"An appellate court should in my view 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."

Mere surprise at a Hearing Officer's conclusion, or the appeal court's preference for a different conclusion are, of themselves, insufficient for that purpose. Where the Hearing Officer is required to make a multi-factorial global assessment in relation to a matter in issue, assertions by the Appellant that he attributed too much or too little weight to particular factors are unlikely to be of assistance, in the absence of an error of principle.

THE BACKGROUND FACTS

The Appellant is an Open Joint Stock company based and registered in Russia. It was founded in 1990 to provide a range of financial services (including but not limited to retail banking services) to its customers. In 2000 the Appellant set up a London office with a view to attracting UK investment into companies in Russia and the CIS countries, seeking as its UK customers institutional investors such as high street banks, investment banks and pension funds. It has used the name "ALFA-BANK" in the UK since 1999.

The Respondent is one of the largest banks in Greece, having been founded in 1879. Its activities in the UK can be traced back to 1922. The Respondent has its own branch in London, but banking activities are also carried on in the UK by two London based subsidiaries of the Respondent, Alpha Bank of London Limited ("ABL") and Alpha Credit Group plc ("ACG"). ABL also has a wholly owned subsidiary ABL Independent Financial Advisers Limited ("ABLIFA") which, although now largely dormant, has in the past offered investment products to customers as part of the banking activity of the Respondent's group, making use of the name Alpha for that purpose..

The Respondent and its subsidiaries carry on business in the UK mainly from two London branches, one in Mayfair and the other in the City. The group's UK customer base consists mainly (although not exclusively) of Greek nationals resident or carrying on business in the UK, or companies mainly owned or controlled by such persons.

As I have noted, the Respondent has been the registered proprietor of the word mark "ALPHA" since July 1992 pursuant to an application for registration filed in May 1987.

THE DISTINCTIVE CHARACTER ISSUE

The Hearing Officer found (and this is not challenged) that the Respondent had used the mark "ALPHA" during the five year period preceding the publication of the Appellant's application, namely between 10 ^th November 2002 and 9 ^th November 2007, not on its own, but as part of phrases which he described as fairly typified by "ALPHA BANK LONDON" and "ALFA BANK AE". He therefore had to decide whether, for the purposes of section 6A(4)(a) of the Act the use of the mark ALPHA in the differing forms which included the additional words BANK LONDON or BANK AE was a use which altered the distinctive character of the mark ALPHA as registered. He concluded that it did not. Having summarised the relevant legal principles by reference to Budejovicky Budvar Narodni Podnik v. Anheuser-Busch Inc (Bud) [2003] RPC 25, Re Nirvana Trade Mark(BLO/262/06)Re Mus Trade Mark(BLO/061/08) and Orient Express Trade Mark (BLO/299/08), he concluded, at paragraph 45 of the Decision as follows:

"The addition of the word BANK LONDON to the mark Alpha appears to fall into the category of variant use that enables ABAE ( the Respondent) to adapt its mark to the marketing and promotion requirements of the services concerned. The addition of the descriptive words BANK LONDON does not change the distinctive character of the mark as registered. Similarly, the addition of the word BANK AE merely describes the nature of the services and, whilst the precise meaning of AE will not be known by the average UK consumer, it will nonetheless be seen as indicating some nature of the company in the same way as "ltd" or "plc" may do."

Mr Malynicz for the Appellant made no criticism of the Hearing Officer's citation and summary of the relevant legal principles in relation to this issue. He submitted however that the Hearing Officer had failed to apply them to the facts, basing himself on the following extract from the decision of Richard Arnold QC sitting as Appointed Person in the Nirvana case, at paragraph 34:

"The second question is whether that sign differs from the registered trade mark in elements which do not alter the latter's distinct character. As can be seen from the discussion above, this second question breaks down in the sub-questions, (a) what is the distinctive character of the registered trade mark (b) what are the differences between the mark used and the registered trade mark and (c) do the differences identified in (b) alter the distinctive character identified in (a)?"

Mr Malynicz submitted that the Hearing Officer failed to carry out the three stage analysis called for by that passage (albeit that it was cited in full in paragraph 39 of the Decision). He said that the Hearing Officer had simply failed to ask himself what was the distinctive character of the registered trade mark, and proceeded straight to the second and third stages of the test. He said that all could be found in the Decision about the first stage was (in paragraph 41):

"The registered mark is the word ALPHA in ordinary typeface. There is no embellishment or additional material and it follows that its distinctive character resides in the word alone."

Mr Malynicz...