Burges Salmon LLP - UK
An appeal against the rejection of an opposition against the mark QUIN has been dismissed, finding that the average consumer would be unlikely to confuse it with the mark QUIZ or form a link between the two. According to the appointed person, QUIZ would be immediately understood by the consumer and this conceptual recognition would negate any confusion or link otherwise arising from the visual and aural similarities between the signs.
The opposed mark QUIN, in slightly stylised form, covered goods and services in Classes 16, 18, 25 and 35. The opponent relied on two earlier UK marks and one EU mark for QUIZ in word and slightly stylised form, which were registered and used for goods and services in Classes 14, 18, 25 and 35. For procedural economy, the hearing officer considered the opposition on the basis of one of the three earlier marks, UK Trademark 2585713 (the 713 mark), which he considered gave the opponent the widest rights.
The opposition was rejected on all grounds and the opponent appealed the decision.
The opponent claimed that the hearing officer had erred in:
- finding a medium rather than a high level of visual similarity between the marks;
- failing to find direct confusion between the 713 mark for Classes 18 and 25 goods, by not considering the likelihood of confusion from the perspective of the average consumer, including not taking into account how the marks would be used on these goods and the effect of the purchasing process on confusion;
- failing to find that there was a likelihood of direct confusion with the 713 mark for Classes 18 and 25 goods, by incorrectly applying the law when considering the interrelation between visual, aural and conceptual similarity and its effect on the assessment of a likelihood of confusion under Section 5(2)(b) of the Trademarks Act; and
- failing to find that the consumer would form a link between the marks, and that the use of the opposed mark (for all applied-for goods) would take unfair advantage of and/or be detrimental to the distinctive character of the earlier marks, by incorrectly applying the law when considering the interrelation between visual, aural and conceptual similarity and its effect on whether the average consumer would draw a link between the marks as required by Section 5(3).
As to the first ground, the appointed person upheld the finding of medium similarity, despite the opponent’s argument that when rotated 90 degrees, the letters ‘N’ and ‘Z’ are similar and evidence that QUIZ was often shown at peculiar angles in use. The appointed person deemed these arguments to be artificial and out of context. The correct approach was to assess the immediate impression of the mark as a whole on the average consumer without dissection.
In rejecting the second ground, the appointed person stated that it was not necessary for a hearing officer to conduct a global assessment as an arithmetical exercise and explain the formula that he used in reaching his conclusion. Moreover, he was satisfied that the hearing officer had taken all relevant factors into adequate account. He also rejected the opponent’s arguments that the hearing officer had not properly addressed imperfect recollection in the context of the actual use of marks, in that words and logos were displayed at different angles, different sizes and in different orientations on goods, nor considered how that would affect the average consumer. The appointed person confirmed that it was necessary to consider the typical situation of use only. Further, it was not necessary to consider speculative or extraordinary circumstances, unless there was sufficient evidence or argument that this would affect the perception of the average consumer, which was not the case here.
The third ground was also rejected, as was the argument that the visual and aural similarities would make the first impact and result in imperfect recollection and confusion between the marks, with the conceptual impact coming too late to negate this. The appointed person upheld the hearing officer’s finding that the clear conceptual effect of QUIZ on the consumer would neutralise the visual and aural similarities. The appointed person also rejected the claim that the average consumer would see and understand QUIZ to be a fashion brand, which would negate the conceptual impact, stating that “a mark does not lose its conceptual meaning simply because it is used as a brand” and that only in very exceptional cases going far beyond the evidence of high distinctive character alone would use override and suppress the conceptual meaning of a mark.
Finally, in rejecting the fourth ground, the appointed person upheld the hearing officer’s finding that the conceptual meaning of QUIZ was so strong that a consumer encountering QUIN would be unlikely to think of QUIZ and thereby make the necessary link between the marks.
The decision recognises that a strong conceptual meaning can trump significant visual and aural similarities and result in no likelihood of confusion, even when dealing with identical goods. The decision also reemphasises the fact that a global assessment of marks in the context of establishing likelihood of confusion (and the association link necessary for Section 5(3)) should be uncomplicated, should not be assessed against a backdrop of unusual, extraordinary or artificial circumstances, and should not be over or under thought by the decision maker. Attempts to place the assessment within these parameters are not appropriate.
The appointed person made a number of interesting comments about case management and the use of shortcuts for the purpose of procedural economy, including that the making of assumptions about issues such as the identity of goods or the distinctiveness of a mark, even if not in dispute, should in the normal run be evaluated fully by the hearing officer in the light of all relevant factors in play.