Burges Salmon LLP - UK
The UKIPO has cancelled the registration of the TRANSFORM DENTAL/TRANSFORM trademark after Transform Hospital Group Limited applied to invalidate.
Mohammad Hadi Rajabi (the proprietor) obtained a registration for the mark TRANSFORM DENTAL/TRANSFORM WHITENING (series of two) in August 2020 for “teeth whitening preparations” in Class 3 and “teeth whitening services; dental clinic services” in Class 44. Transform Hospital Group Limited (the applicant) applied to invalidate the registration for all the goods and services under Section 5(2)(b) of the Trademarks Act 1994 on the basis of a likelihood of confusion with its earlier UK mark TRANSFORM for “medical services; cosmetic surgery and treatments; information, advisory and consultancy services relating to the aforesaid services”.
Proof of use
The earlier mark was subject to proof of use requirements as it had been registered more than five years before the filing date of the proprietor’s mark. In assessing this, the hearing officer reiterated that “use” of a mark extends to its use as part of another mark or in conjunction with that other mark. So long as that registered mark continues to be indicative of the origin of the goods or services, that use may be considered “genuine use”. The mark as used may differ from the mark as registered and still be genuine use, so long as the differences in the mark in use do not alter the distinctive character of the registered mark. Use of a mark does not have to be quantitatively significant to be “genuine”, but must be use aimed at maintaining or creating a share in the market for the relevant goods or services.
The hearing officer accepted from the evidence that the earlier mark had been genuinely used in the United Kingdom during the relevant period, but not for medical services, which should be excluded from a fair specification in relation to Class 44.
Comparison of the goods and services
The hearing officer found teeth whitening services to be identical to cosmetic surgery and treatments; information, advisory and consultancy services relating to the aforesaid services and teeth whitening preparations to be complementary and similar to a medium degree. Dental clinic services can include cosmetic dentistry and were therefore similar to at least a medium degree to cosmetic surgery and treatments.
The average consumer and degree of attention
The average consumer for cosmetic surgery and treatments was found to be a member of the general public, with a specific concern about their appearance. Due to the cost and degree of risk involved, the hearing officer considered that the average consumer would pay a high degree of attention when purchasing these goods and services. The same applied to teeth whitening services; dental clinic services. For teeth whitening preparations, the average consumer would be both professional consumers and members of the general public and at least a medium degree of attention would be paid to the purchase, taking into account factors such as suitability, quality and safety considerations.
Comparison of the marks and likelihood of confusion
The marks were found to be visually, aurally and conceptually similar to a medium degree, with the hearing officer noting that the words ‘dental’ and ‘whitening’ were descriptive terms. The distinctive aspect of each of the contested marks was the word ‘transform’.
Distinctiveness of the earlier mark
The evidence of use filed did not support a finding of enhanced distinctiveness in the word ‘transform’ for the applicant’s services. The word was not directly descriptive, but was suggestive of the transformative qualities associated with cosmetic surgery. The earlier mark had a medium degree of inherent distinctiveness.
Despite the high degree of attention being paid by the average consumer, the hearing officer found that, due to the high degree of similarity between marks and goods and services, there was a direct likelihood of confusion between the marks. The hearing officer also found a likelihood of indirect confusion arising due to the fact that the words ‘dental’ and ‘whitening’ were descriptive terms and suggested brand extensions of the earlier mark. The application for invalidity therefore succeeded in its entirety.