“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.”
Formula One objected that not only was the distinctive element of applicant’s mark F1 identical to their CTM, but also that the goods covered were identical and/or similar, emphasising that the similarity was accentuated by the enhanced distinctiveness and cachet of the F1 mark, garnered through its substantial and long-standing use.
The Hearing Officer held that the competing goods were identical based on the principle enunciated in Case T-133/05 Gérard Meric v OHIM, [which the IPKat couldn't find on the Curia database, searching both by name and by case number. Does anyone have a copy or a link?] in which the General Court stated that the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark. On this principle, Formula One’s specification in Class 9 “computer software [recorded]” would encompass all of Lowther's goods.
What does this mean on the facts of this opposition? Given the presence of the word TEAM as the first element of Lowther's mark, the Hearing Officer said that the degree of visual and aural similarity between the competing marks was "reasonable" [note for those who read English as a second or subsequent language: the word "reasonable" carries a second meaning in colloquial English, which is broadly equivalent to "having some degree of substantiality". Thus a cup of tea can be said to be "reasonably" hot without the implication that it is reasonable for the tea to be hot. Much the same usage is found with the word "fairly", which need not imply any degree of fairness. Thus one can speak of someone's conduct being "fairly unscrupulous" without any sense of contradiction].
The Hearing Officer continued that, given that these were fast-track proceedings in which neither party had sought leave to file evidence, there was no evidence to assist him one way or the other and he could not therefore reach any conclusion as to what conceptual message, if any, was conveyed by the respective marks as a whole to the average consumer. The inclusion of the word TEAM as the first element of Lowther's mark was sufficient to avoid the likelihood of direct confusion, where one trade mark is mistaken for the other. But what of a likelihood of indirect confusion, given what might be the weak distinctive character of the earlier mark and the at least relatively high degree of attention that would be paid to the selection of the goods at issue? Even though Lowther’s mark consisted of two elements which contributed to its overall distinctive character, bearing in mind that identical goods were involved, the presence of the word TEAM in his mark was insufficient to establish that the average consumer would not assume that Lowther's goods were those of Formula One or of a commercially-related economic undertaking. In reaching this conclusion, the Hearing Officer was guided by the CJEU’s decision in Case C-235/05 L’Oréal SA v OHIM (FLEXI AIR), which addressed the risk that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations rather than assuming that the difference denoted goods from different traders. Accordingly the opposition based on section 5(2)(b) of the Act succeeded in respect of all of the goods for which Lowther sought to register his mark, and the application was refused.
This a laudable victory for Formula One Licensing under relative grounds since, back in June 2007, Hearing Officer David Landau had rejected its F1 trade mark application for Class 41 goods on absolute grounds, stating that it was not viewed as a trade mark by the public but that it only enjoyed a monopoly in organising the F1 races and could not be therefore be registered as a trade mark (O/169/07)
Shalini's other recent guest post on UKIPO proceedings can be read here.
Eric the Cat in the fast track here