High Court considers significance of component elements of composite marks

In Aveda Corporation v Dabur India Ltd ([2013] EWHC 589 (Ch), March 18 2013), the High Court has allowed an appeal against a decision rejecting an opposition against a UK trademark application for DABUR UVEDA, ruling that the hearing officer had erred in finding that there was no likelihood of confusion with the earlier mark AVEDA registered for identical and similar goods. Arnold J found that this was a case where the average consumer would perceive both the whole of the mark applied for and its constituent parts to have significance, and could be misled into believing that there was a similar connection between the respective parties.

Dabur India filed a UK trademark application for DABUR UVEDA covering various goods in Classes 3 and 5 of the Nice Classification. Aveda opposed the application primarily for likelihood of confusion under Section 5(2)(b) of the Trademarks Act 1994 based on its earlier Community and UK registrations of the word mark AVEDA in various classes including Classes 3 and 5. 

The hearing officer dismissed the opposition. He accepted that some of the goods were identical and some either highly or reasonably similar and that Aveda's mark had a "high level of inherent distinctive character". Following the Court of Justice of the European Union’s guidance in Medion v Thomson (Case C-120/04), he concluded that:

• the 'Dabur' and 'Uveda' elements of Dabur's mark shared equal prominence; and
• considering the marks as a whole, the addition of the word 'Dabur' and the fact that the words 'Uveda' and 'Aveda' began with different letters, were sufficient to avoid a likelihood of confusion, even for identical goods.

Aveda appealed arguing, amongst other things, that the hearing officer had failed correctly to apply Medion v Thomson.

Arnold J noted that the assessment of likelihood of confusion must be made by considering and comparing each of the signs as a whole. There were situations in which the average consumer, while perceiving a composite sign as a whole, would recognise that it consisted of two signs one or both of which had a significance which was independent of the significance of the composite whole and could be misled into believing that there was a similar kind of connection between the respective undertakings.

Arnold J considered that the hearing officer failed to correctly apply Medion v Thomson by neglecting to consider whether the average consumer would perceive 'Uveda' to have significance independently of DABUR UVEDA as a whole and whether that would lead to a likelihood of confusion. In the judge's mind, there could be "little doubt" that the average consumer who was familiar with Aveda beauty products would be likely to be confused by the use of DABUR AVEDA in relation to identical goods. There would be a strong likelihood that the average consumer would think that it indicated some connection between the parties. It made little difference that the second word in the composite mark was 'Uveda' rather than 'Aveda'. 'Uveda' was both visually and aurally very similar to 'Aveda' and it was likely that some consumers would misread or mishear 'Uveda' as 'Aveda'.

In conclusion, in Arnold J’s view, the hearing officer should have found that there was a likelihood of confusion at least in relation to goods covered by Dabur's application which were identical to Aveda's goods and, taking all of the relevant factors into account, and applying the interdependency principle, that there was also a likelihood of confusion in relation to similar goods. However, he found that the application should be allowed to proceed to registration in respect of those goods which were neither identical nor similar.

This case is a useful illustration of how likelihood of confusion is assessed between a highly distinctive earlier mark and a composite mark that features it, although with a minor variation. The decision, which extends the principle in Medion v Thomson to similar - as opposed to merely identical - component elements of a mark, is of some comfort to owners of highly distinctive brands as it sends the message that third parties cannot simply make a minor alteration to their mark and combine it with unrelated terms in an attempt to circumvent a finding of trademark infringement. However, in finding a likelihood of confusion, Arnold J does not appear to have considered the principle that an average consumer pays more attention to the beginning of a word mark than to the end.

Désirée Fields, McDermott Will & Emery UK LLP, London