WISI opposition against WI-FI dismissed

United Kingdom

Richard Arnold QC, an appointed person of the UK Intellectual Property Office, has dismissed an appeal against a decision to reject oppositions to registration of the word mark WI-FI and a device mark featuring that word.

WI-FI Alliance made an application to register the word mark WI-FI and a device mark incorporating that word as certification marks in Class 9 of the Nice Classification. Wilhelm Sihn JR KG opposed the registration on the basis of its earlier WISI mark registered for similar goods. The opposition was dismissed and Wilhelm Sihn appealed to the appointed person.

Arnold dismissed the appeal. Among other things, Arnold held that:

  • the hearing officer had correctly applied the interdependency principle by considering that a lesser degree of similarity between the marks could be offset by a greater degree of similarity between the goods and vice versa;

  • the hearing officer had not made an incorrect judgment with regard to consumer considerations by holding that issues such as compatibility and technical support would be at the forefront of both a domestic and a commercial consumer's mind when buying these products; and

  • although there was no evidence regarding public pronunciation of the marks and it was possible to pronounce them in a number of different ways, a difference of meaning between the marks was clear - WI-FI meaning 'wireless fidelity' and WISI having no meaning.

However, Arnold criticized the hearing officer's holding in relation to the WI-FI device mark that because the marks were not visually similar then they were not similar overall. Despite his views on this issue, Arnold stated that even if the hearing officer had decided that a degree of similarity existed between the WI-FI device mark and the WISI mark, he still would have been bound to reach a decision that the likelihood of confusion was no greater in the case of the device mark than in the case of the word mark.

It is worth noting that Wilhelm Sihn also opposed the registration of the WI-FI device mark as a Community collective mark. The First Board of Appeal of the Office for Harmonization in the Internal Market held that there was no likelihood of confusion because, although the goods at issue were similar, there existed visual and conceptual differences between the marks.

Laura Peggs, Hammonds, London

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