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Monday, 7 August 2017

Scottish court “vaporized” trade mark invalidity appeal

Josey Bright
This guest post comes to us from Katfriend Josey Bright (Fox Williams LLP).  She looks at a recent appeal of a UK IPO invalidity decision.

Here's what Josey writes:
This appeal against the invalidity decision of a UK IPO hearing officer marked the first time that a Scottish Court has heard an appeal of a hearing officer under the s. 76 of the Trade Mark Act 1994 (TMA). 
The appeal was against the hearing officer’s invalidity declaration under s. 47(2) TMA, in an application bought by the respondent, because the marks were confusingly similar contrary to s. 5(2) (b) TMA. The decision addresses the assessment of the average consumer, comparison of trade marks and the likelihood of confusion assessment. It is also of interest as it confirms that an appeal to the Scottish Court under the TMA does not differ whether north or south of the border despite differences in the formulation of the respective procedural rules.  
The appellant, CCHG Ltd (trading as “Vaporized”), was the registered proprietor of UK Trade Mark No 3085823 for the stylised words VAPORISED INHALE THE FREEDOM. 
The respondent, Vapouriz Limited, is the registered proprietor of an earlier UK Trade Mark No 2605137 for the stylised words VAPOURIZ.  
Both marks were registered for identical goods, being “smokeless cigarette vaporizer pipes” in class 34. The appellant’s mark was the later mark, applied for and registered three years after the respondent’s. 
Preliminary issue 
The procedural rules of the Scottish Court of Session provide that an appeal shall be a 'rehearing' whilst the CPR provides that it is a 'review'. A preliminary issue was whether the scope of the appeal court’s function was any different in Scotland.
In her submissions the appellant’s counsel also questioned whether the test which applied differed in the respective courts, arguing that the appellant court in Scotland should assess whether the hearing officer  erred in principle or was simply “wrong” in allowing the application for a declaration of invalidity, rather than “plainly wrong” as was the test in the English courts.  
Substantive issues 
The appellant’s counsel raised the following arguments against the hearing officer’s decision: 
Average Consumer: too much weight had been given to the aural perception of the marks and not enough to the use of words such as “vaporized” which would be understood by the average consumer as descriptive words in relation to e-cigarettes in the UK.  
Comparison of the marks: the hearing officer artificially dissected the marks into constituent parts and failed to compare them as a whole. 
Likelihood of confusion: the hearing officer’s assessment focussed on the word element and did not recognise the importance of the visual elements in the marks and give reference to the marks as a whole. 
Decision  
On the preliminary issues:
  1. There was no difference in the formulation of the procedural rules, which provided for a “review” (in England under the CPR) and a “rehearing” in Scotland. It is desirable that the appellate function is the same in Scotland and England considering the TMA applies throughout the UK. The appellate court recognises that the assessment for the purpose of s.5(2)(b) TMA is a multi-factorial one which involves the hearing officer weighting up certain factors and exercising a specialised jurisdiction. 
  2. There was no material difference in approach between Scotland or England in relation to the test to be applied in such appeals i.e. the appeal could only succeed if there was a distinct error of principle or where the decision was “plainly wrong”. 
On the substantive issues:
  1. Average consumer: the hearing officer did not err in principle by determining the relevance of the aural similarities and was not wrong in that conclusion. He had taken into account the average consumers understanding of the meaning and use of words “vape” and “vapourise” and he was not required to give exhaustive reasons for every stage of his decision making. 
  2. Comparison of marks: a multi-factorial assessment of marks made up of words and devices necessarily involved considering the parts individually and a view being taken as to their relative contribution to the overall impression. The hearing officer had not confined himself to consideration of the component parts so there was no error in his approach.
  3. Likelihood of confusion: there was little force in the argument that the hearing officer placed too much emphasis on the word element at the expense of the visual elements of the marks since the hearing officer considered the mark as a whole in the overall assessment. There was no error in hearing officer’s approach in this respect.
The appeal was therefore dismissed and the invalidity decision of the hearing officer stands on the grounds that the “Vaporized” mark  was confusingly similar to the earlier “Vapouriz” mark contrary to section 5 (2) (b) TMA.   

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