Parties cross swords over knife marks

United Kingdom
In Rousselon Frères et Cie v Horwood Homewares Ltd ([2008] EWHC 881 (Ch), April 24 2008), the Chancery Division of the High Court of England and Wales has allowed Rousselon Frères et Cie’s appeal from a decision of the hearing officer.

Rousselon applied to invalidate two UK trademarks belonging to Horwood Homewares Ltd:
  • JUDGE SABATIER (and design); and
  • STELLAR SABATIER (and design).
Rousselon claimed that there was a likelihood of confusion between Horwood's marks and three of its earlier UK trademarks:
  • PROFESSIONAL SABATIER (and design); 
  • LION SABATIER (and design); and
  • the word mark SABATIER.
The grounds of contention were mainly goods in Class 8 of the Nice Classification (including knives) and the word 'Sabatier' (a surname). The application also covered domestic utensils in Class 21.

The hearing officer stated that:
"The words ‘judge’ and ‘stellar’ do not ‘hang together’ with ‘Sabatier’ to make a meaningful whole, and even less so when presented in the logo form in which they have been registered. To my mind, the positioning and difference in the style of font used and the ‘star’ curve around the ‘S’ suggests that ‘Sabatier’ is a separate element. As far as I am aware, the words ‘judge’ and ‘stellar’ are not descriptive of the goods, and by their relative positioning and size, are the dominant, distinctive element. The corresponding graphical representations (judge's head and star) serve to emphasize the words, but also contribute to the overall visual impact. However, these elements do not overwhelm ‘Sabatier’. The question is, as put by Geoffrey Hobbs QC in his decision sitting as the appointed person in Raleigh International Trademark ([2001] RPC 202), whether the later mark captures the distinctiveness of the opponent’s mark." 
Rousselon appealed, arguing (among other things) that the hearing officer had erred in principle in holding that there was no likelihood of confusion, having essentially accepted that the word 'Sabatier' retained an independent distinctive role in Horwood's trademarks.

Mr Justice Warren of the Chancery Division of the High Court of England and Wales allowed the appeal. The court held as follows:
"the actual test... remains whether, because of similarity of marks, there is a likelihood of confusion. [...] It does not say that a composite mark which contains an earlier mark will always carry a likelihood of confusion; rather, it says that there is such likelihood if the earlier mark has an independent distinctive role. However, the assessment of whether the earlier mark does have such a role is... something which has to be decided before answering the question of whether there is a likelihood of confusion. To elide the question of an independent distinctive role with the question of the likelihood of confusion runs the risk of answering the former question by first providing an answer to the latter. That would be to answer the question ‘Is there a likelihood of confusion’ with the answer ‘Yes, if there is a likelihood of confusion’ when the answer should be ‘Yes, if the earlier mark retains an independent distinctive role’."
In this case, the word 'Sabatier' retained an independent distinctive role in Horwood's trademarks. Although the hearing officer had not stated that as a conclusion, it was, in the circumstances, a conclusion which he must have considered to be correct. Accordingly, it was not possible to maintain that there was no likelihood of confusion between Rousselon's SABATIER mark and Horwood's marks.
Therefore, the court found that the hearing officer had erred in principle. His error was significant and vitiated the basis on which he had formed his view. The court decided to substitute its own decision to the effect that the applications made under Section 47(2) of the Trademarks Act succeeded so far as the registration in respect of Class 8 goods was concerned.
Arguably, there has been an over-intellectualization of the test of likelihood of confusion of composite marks in the wake of the European Court of Justice's decision in Medion v Thomson Multimedia (Case C-120/04). This judgment was over 100 paragraphs in length - no wonder hearing officers run into trouble.
Jeremy Phillips, IP consultant to Olswang, London

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