Brands Noise - July 2018

As a trade mark specialist, one of the most common questions I get asked is: "Do you think there is a likelihood of confusion between these two trade marks?" 

Sometimes, answering that question is easy - but often not. Any trade mark lawyer worth their salt can recite the correct legal tests and case law for assessing whether there is a likelihood of confusion. However, applying that case law to the facts of each case and correctly predicting the outcome is an art, rather than a science. As has been said many times in previous cases, when making such an assessment, reasonable minds can differ and reach different conclusions.

The question can be particularly difficult to answer when confronted with a composite trade mark, which incorporates within it another's trade mark, or something very similar. Recent decisions in this country highlight the point.

EU and English case law has established that if an average consumer (of the goods or services in question) perceives a composite mark as consisting of two or more signs or components, one or more of which has a distinctive significance which is independent of the significance of the whole mark (i.e. it has an 'independent distinctive role' - in layman's terms, it 'might tell you from whom the goods/services originate') then there could be a likelihood of confusion - but it does not automatically follow that there is a likelihood of confusion. It is still necessary to consider whether average consumers would think that there was a common trade origin, leading to a likelihood of confusion. 

Where an average consumer would perceive the composite mark as a unit, having a different meaning to the meanings of the separate components, then the components do not retain an independent role - and thus it is unlikely that there is a likelihood of confusion. 

Easy to apply in practice? Well, consider the following examples that have arisen recently in the UK:

• An application to register the mark ELVIS JUICE, for 'beer and ale', was successfully opposed by the owner of the earlier mark ELVIS, for 'beer', as an average consumer would consider that both beers came from the "same stable".
• However, the same mark failed to prevent the registration of the mark BREWDOG ELVIS JUICE for the same goods, as it was held that the mark ELVIS did not have independent distinctive character in the mark BREWDOG ELVIS JUICE.
• The owner of the earlier mark ENVY, registered for 'spirits', successfully opposed an application to register ANGEL'S ENVY for 'whiskey', as the latter would be seen as a sub-brand of the earlier mark. An average consumer was likely to believe that the respective goods came from the same, or economically linked, undertakings.
• An earlier registration for the mark BUTTERFLY, registered for various items of clothing, footwear and headgear, did not prevent the registration of the figurative mark BUTTERFLY JUNGLE, for various items of clothing, footwear and headgear. The common element (BUTTERFLY) was not enough to conclude that there was a likelihood of direct or indirect confusion.   
• An application to register SIMCITY BUILDIT (for games software and entertainment services) was successfully opposed by the owner of the earlier figurative mark BUILD IT (for entertainment services). It was considered that average consumers could be confused into believing that there was a trade connection of some kind between SIMCITY and BUILDIT, especially given the identity or close similarity of the goods and services.
• The Financial Times Limited, owner of the FT trade mark, was successful in opposing an application to register BRANDFT (for identical services), as the latter would be seen by average consumers as a collocation of the elements BRAND and FT - and thus as a sub-brand, or brand extension, of the trade mark 'FT'.

So, next time you think your trade mark adviser is 'sitting on the fence', when they say that there might, but might not, be a likelihood of confusion between a mark and a composite mark that incorporates within it the other mark (or something very similar), have some sympathy.  Reasonable minds can differ and reach different conclusions!