“Likelihood of confusion” – reasonable minds can differ!

A recent case heard before the Appointed Person yet again highlights how difficult it is to appeal successfully a decision made at first instance before the UK IPO as to whether there is a likelihood of confusion between two trade marks

What was the case about?

The applicant filed an application to register the mark LUCI for various bathroom accessories and furniture items.

The Opponent owned an earlier registered UK trade mark for the mark LUCITE, registered for identical and highly similar goods.

The Hearing Officer held that there was no likelihood of confusion. Average consumers would pay a higher than normal degree of attention when purchasing such goods, as compared to frequently bought household goods. Further, there were clear visual and aural differences between the marks, which would not go unnoticed, and the marks were not conceptually similar.

The average consumer would not directly mistake one mark for the other and would not believe that LUCI was a brand extension of LUCITE.

The Opponent appealed the decision to the Appointed Person.

The principles applying on an appeal

Case law states that, in the case of a multifactorial assessment or evaluation, such as whether or not there is a likelihood of confusion between two trade marks, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the first instance decision in the absence of a distinct and material error of principle.

Special caution is required before overturning such decisions. 

In particular, where an Appointed Person has doubts as to whether the Hearing Officer was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the Appointed Person would have made in a situation where reasonable people may differ as to the outcome of such a multifactorial evaluation. Mere doubt about the decision will not suffice. It has to be ‘wrong.’

What was the outcome?

The appeal failed. 

As far as the Appointed Person was concerned, the Hearing Officer referred to the key legal authorities and law in her decision and she did not fail to apply these principles to the facts. 

She had correctly held that whilst there were noticeable similarities between the marks LUCI and LUCITE, there were also noticeable differences, and “the differences are such as to make it less likely that the average consumer would think that goods marked with the respective marks came from the same or related sources.”

As the Appointed Person said: “I do not consider that the hearing officer can properly be criticised for the decision she reached, and it is not incomprehensible. The respective marks are not particularly similar taken as a whole, even though there are similarities as to elements. I do not find the hearing officer’s decision surprising….I consider that the hearing officer reached a reasonable decision and made no errors of a kind that would entitle this tribunal to reverse it…”

Lessons learned 

The statistics show that it is exceedingly difficult to successfully appeal a first instance decision of the UKIPO where the trade mark Opposition proceedings concern whether or not there is a likelihood of confusion between two marks. 

As the Hearing Officer stated at first instance: “There is no scientific formula to apply in determining whether there is a likelihood of confusion. It is a global assessment where a number of factors need to be borne in mind.”

Reasonable minds will differ. The decision involves the consideration of a large number of factors, whose relative weight is not laid down by law, but is a matter of judgment for the Hearing Officer on the particular facts of each case. The legal test involves a prediction as to how the public might react to the presence of two trade marks in ordinary use in trade. Any wise person who has practised in this field will have come to recognize that it is often not possible to make such a prediction with absolute confidence. Thus, any sensible adviser will therefore apply a healthy degree of self-doubt to their own opinion on the result of the legal test in any particular case.

For more information, please contact Carl Steele.