Revive A Phone Ltd v WeFix

Hearing date: 30 June 2022

APPROVED JUDGMENT

Introduction

This is an appeal by Revive a Phone Limited against the decision of Rosie Le Breton, Hearing Officer for the Registrar of Trade Marks, dated 9 September 2021 (the “Decision”) invalidating UK registered trade marks No. 3267855 for the word WEFIX (the “Word Mark”) and No. 3281995 for the logo shown below (the “Logo Mark”).

The application to revoke the marks under Section 47(2)(a) of the Trade Marks Act 1994 (the “Act”) relied on section 5(2)(b) of the Act based on the Respondent's earlier EU trade mark 14948343 (the “Earlier Mark”) shown below.

Section 5(2)(b) of the Act provides that:

“5(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 on the part of the public, which includes the likelihood of association with the earlier trade mark.”

The Word Mark was applied for on 2 November 2017 and registered on 26 January 2018 for services in class 37 including repair and maintenance of computer, telecommunications hardware and smartphones and also repair of various devices and equipment.

The Logo Mark was applied for on 11 January 2018 and was registered on 14 December 2018 for services in class 36 including insurance and financial and monetary affairs and in class 37 for a range of repair services, including repair of telephones, tablets, communications systems and computers.

The Earlier Mark was registered on 15 July 2017, claiming the colours orange, black and white in classes 9, 35 and 36. The registration in class 9 includes cell phones, smartphones, tablet computers and similar devices. The registration in class 35 includes retailing both online and in shops of electronic and telecommunications apparatus, telephones and smartphones. The registration in class 36 includes repair of items including telephones, smartphones and tablets.

Mr Selmi appeared for the Appellant. The Respondent was not represented at the hearing. In a letter to the Appellant's solicitors dated 28 October 2021, the Respondent's solicitors said that the Respondent's position was that the Decision was correct, and they been instructed not to participate in the appeal.

The Decision

The Decision starts with a description of the marks and the evidence and makes findings on the goods and services concerned. These were that the Word Mark was similar to the Earlier Mark to a medium degree and that the Logo Mark was similar to the Earlier Mark to a medium or medium and high degree depending on the services concerned. The Appellant accepted these findings.

The Hearing Officer then made a comparison of the marks in issue. She found that the Earlier Mark comprised the two English words We and Fix, and that this was its dominant element. The orange box played a role in the overall impression of the mark, and the stylised ‘X’ was not negligible.

The Word Mark was filed as a single word comprising the words ‘We’ and ‘Fix’. The Hearing Officer found that overall impression resided in the mark as a whole.

The Hearing Officer found that the wording was the most dominant element of the Logo Mark with the ‘lightning strike’ playing a slightly lesser role. The border played a lesser role.

The Hearing Officer then made visual, aural and conceptual comparisons of the marks. She found that the Word Mark was visually similar to a high degree to the Earlier Mark, and the Logo Mark was similar to a medium degree. The marks were aurally identical. The Word Mark was conceptually identical to the Earlier Mark, and the Logo Mark was conceptually highly similar.

Having considered the average consumer and the purchasing act, the Hearing Officer then considered the distinctive character of the Earlier Mark. She found that the Earlier Mark was inherently distinctive to a low degree, apparently accepting that it had only a or the minimum level of distinctiveness on the basis of its meaning as ‘we repair’. In the context of the registration, the mark alluded to the fact that the goods on offer might be repaired, second hand items, or that the offeror might also offer repairs. The Respondent had not filed any evidence of use that might have enhanced distinctiveness.

The Hearing Officer then carried out a global assessment under the heading “GLOBAL ASSESSMENT” bringing in the relevant factors set out in the Trade Mark Registry's summary of the principal decisions of the Court of Justice of the European Union relating to the likelihood of confusion. In this, she noted that the level of distinctive character held by the earlier mark will have an impact on the likelihood of confusion; that may be less likely where that distinctive character is low; and that distinctiveness of the common elements is key.

The Hearing Officer found that there would be direct confusion between the Word Mark and the Earlier Mark, and there was also a likelihood of indirect confusion.

The Hearing Officer found that there would not be direct confusion between the Logo Mark and the Earlier Mark. She noted the low level of distinctiveness in the common element WE FIX and how this was at least allusive of the goods and services offered. Considering L'Oréal SA v OHIM, Case C-235/05 P and Duebros Limited v Heirler Cenovis GmbH BL O/547/17 she found that there was a likelihood of indirect confusion between the marks.

Accordingly, the Hearing Officer found both the Word Mark and the Logo Mark were invalid.

The approach on an appeal

The parties relied on different authorities on the correct approach to an appeal.

The Appellant cited TT Education Ltd v Pie Corbett Consultancy Ltd (O/017/17) (paragraphs 14 to 52) as approved by Mr Justice Arnold (as he then was) in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch) and cited in the context of an appeal from the UK IPO to the High Court by Mr Justice Carr in Gap (ITM) Inc v Gap 360 Ltd [2019] EWHC 1161 (Ch).

The Respondent's October 2021 letter cited the later case Yellow Bulldog v AP & Co Ltd [2020] EWHC 3558 (Ch). That has since been applied by this court in Tik Tok International Ltd v Tiktok Information Technologies UK Ltd [2022] EWHC 1220 (Ch) (18 May 2022).

For the purposes of this appeal, the approaches in these cases are the same. This court should conduct a review of the Decision. There is no suggestion of procedural or other irregularity. The court will therefore only allow the appeal if the Decision was wrong.

As Mrs Justice Falk said in Tik Tok:

“Where the court is asked to review an evaluative judgment based on a multi-factorial comparison, such as the similarity of marks or the existence of a likelihood of confusion, there will be real reluctance (but it has been said, “not the very highest degree of reluctance”) to interfere in the absence of a distinct error of principle. A significant degree of respect is shown to a Hearing Officer's specialised experience.”

The Appeal

Mr Selmi, for the Appellant, said that this was a simple appeal concerning the treatment of descriptive words under Section 5(2)(b) of the Act. The Hearing Officer had made two errors of principle.

First, she failed to take proper account of the fact that the common element between the marks was the words WE FIX, which is descriptive and of very low distinctiveness for the goods and services in issue. This should have influenced her analysis of the level of visual, aural and conceptual similarity between the respective pairs of marks.

Secondly, she failed properly to apply the principle that where the only similarity between the respective marks consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion. Had she undertaken a proper analysis, she would have found no likelihood of confusion between the marks and would not have invalidated the contested marks.

The Appellant did not challenge to the Hearing Officer's assessment of the comparison of goods and services, the average consumer and the purchasing act, or the distinctiveness of the earlier mark.

The first ground

The Appellant developed the first ground as follows. It was accepted that the Hearing Officer correctly reminded herself that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created...