Much has been written over the years about how minor differences between two fairly descriptive and weakly distinctive trade marks can be sufficient to preclude a claim that the registration and/or use of the later mark will lead to confusion with the earlier registered trade mark.
However, a case earlier this year reminds us that the facts of each case matter and there is no ‘one-size-fits-all’ answer to the question of whether confusion will (or will not) arise in the case of two such trade marks.
The applicant applied to register the following mark as a UK registered trade mark:
The application was for the following goods:
General Ecology, Inc. opposed the application, based on its earlier word mark, NATURE PURE, registered for:
The Opponent argued that, due to the identical and highly similar goods in question and the similarity of the two trade marks, there would be a likelihood of confusion - and thus the application for registration of the later mark should be refused.
At first instance, the Opposition failed.
The Hearing Officer concluded that, in the context of the goods in issue, the earlier mark NATURE PURE alluded to the goods producing natural, unspoilt, water – and thus possessed a low degree of inherent distinctive character.
That fact, combined with the visual differences between that mark and the mark the subject of the application (which differences she concluded would not go unnoticed), led her to conclude that, even allowing for imperfect recollection, it was unlikely that the competing marks would be mistaken or misremembered for one another. Rather, the differences were likely to be sufficient to enable consumers to differentiate between them. As a consequence, there would be no likelihood of confusion.
General Ecology appealed the decision to the Appointed Person.
The appeal succeeded.
The Appointed Person held that the earlier trade mark must be treated as having at least the minimum degree of distinctiveness necessary to obtain registration.
Further, even where an earlier mark has a low level of distinctiveness, this should not be given undue weight. There can still be a likelihood of confusion by reason of the similarity of two marks and the goods/services covered by them, even where the earlier mark has a weak distinctive character.
It may be harder to establish a likelihood of confusion in such a scenario, but it is not impossible. A finding of a likelihood of confusion may be appropriate where the average consumer recognises that the common element between the two marks, whilst capable of being used descriptively, is in fact being used distinctively as a badge of trade origin (i.e. to indicate the trade source of the goods/services in issue).
The Appointed Person held that the Hearing Officer had given undue weight to the fact that the earlier mark (NATURE PURE) had a low level of distinctiveness. Further:
“When the correct weight is given to the low distinctiveness of the mark, NATURE PURE, it is my view that a consumer paying only an average degree of attention could easily mistake the words NATURAL PURE in the contested mark for the earlier mark NATURE PURE. This is particularly the case when one takes into account imperfect recollection and word of mouth recommendations. Indeed, it must be remembered that the scope of protection of the mark NATURE PURE extends to any typeface and font…... The earlier word mark could therefore be used in exactly the same typeface and font as that used for NATURAL PURE. I also note that the [average] consumer has more regard to the beginning of words….. But in this case one can go further and say that the second word being identical, combined with the small difference between the endings of the first word (E and AL), means that this difference could easily go unnoticed or be discounted by the consumer. In contrast to the Hearing Officer, I do not believe the addition of the water drop and leaf (or indeed the tag line Natural Pure Drinking Water), even though they would be noticed by the relevant public, would be sufficient to dispel any confusion as to origin.”
As an experienced trade mark lawyer, I have realised over the years that nuances matter and that, when it comes to trade mark law and practice, a general rule of thumb is just that – there are always exceptions to the rule.
In this case, the differences between two fairly descriptive and weakly distinctive trade marks were not sufficient to preclude a claim that the registration of the later mark might lead to confusion with the earlier registered trade mark.
So, never assume. Always get advice from an expert as to the risk an earlier mark poses to your planned trade mark. Otherwise, you may repent at your leisure.
For more information, please contact Carl Steele.