Author: Antony Craggs

Court: Appointed Person

Judge: Philip Harris

Judgment: Here

Trade Mark: UK00003651180

Issue: Trade mark validity

Summary

In Elbisco v Kerangus, the Appointed Person has upheld the Hearing Officer’s decision that Kerangus’ application for UK00003651180 (below) in classes 29 and 30 should not be registered in light of Elbisco’s earlier registration UK00003255468 (also below) in class 30.

The decision provides a useful analysis of the average UK consumer’s approach to signs with Latin and non-Latin letters (in this instance Greek).

Background

On 4 June 2021, Kerangus applied for UK ‘180 in classes 29 and 30, including certain food products. Some six months later, Elbisco opposed the application relying on its earlier right, UK ‘468, registered for class 30, again including certain food products.

In response, Kerangus defended the opposition and commenced a cancellation action. Here, it challenged the validity of UK ‘468 (which includes the words απλά and APLA) on the basis of its earlier registration UK0003700115 (which includes a stylised version of απλά), depicted below. UK ‘468 was registered in classes 29 and 30 for certain food products.

In both instances, the parties relied on s. 5(2)(b) of the Trade Marks Act 1994.

Hearing Officer

The proceedings having been consolidated, the Hearing Officer concluded that:

• The vast majority of average UK consumers would not understand Greek characters;

• As a result, the average consumer would deem Kerangus’ ‘115 mark to comprise the word element ANNA (not απλά);

• Further, the average consumer would consider the dominant element of ‘468 to be APLA (as απλά would not be readily articulable by the consumer);

• As a result, ‘115 and ‘468 were visually and aurally similar to only a very low level and conceptually different;

• While the goods for which the respective marks were, in part, identical or similar, given the lack of similarity of the marks, there was no likelihood of confusion;

• By comparison, the Hearing Officer held that, where APLA was the dominant element of both ‘468 and ‘180, they were visually similar, aurally identical and conceptually neutral;

• Where the goods were, in part, identical or similar, there was a likelihood of confusion;

• It followed that UK ‘468 remained valid, but UK ‘180 was not in relation to certain goods.

Appointed Person

Kerangus appealed on several grounds, including flaws in the assessment of the overall impression of the marks, visual and aural comparison, and likelihood of confusion.

Where the grounds of appeal were primarily a submission that the Hearing Officer’s assessment was wrong in fact, not law, the Appointed Person was unwilling to deviate from the Hearing Officer’s conclusions.

In particular, the Appointed Person emphasised that an appeal is by way of review, not re-hearing. This was recently summarised by the Court of Appeal in Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262, where Arnold LJ as follows:

“110. It is common ground that, in so far as the appeals challenge findings of fact made by the judge, this Court is only entitled to intervene if those findings are rationally insupportable: Volpi v Volpi [2022] EWCA Civ 464, [2022] 4 WLR 48 at [2] (v) (Lewison LJ). Equally, it is common ground that, in so far as the appeals challenge multi-factorial evaluations by the judge, this Court is only entitled to intervene if the judge erred in law or principle …”

The appropriate approach to be adopted by the appellate court was summarised in Axogen Corporation v Aviv Scientific Limited [2022] EWHC 95 (Ch):

“24. Although I was referred to numerous cases on the subject …. the approach of the appeal court to a statutory appeal under section 76(1) of the TMA is uncontroversial. I bear the following principles, relevant to the issues before me, firmly in mind:

i) The appeal is by way of a review, not a rehearing;

ii) The appeal court will allow an appeal where the decision of the lower court was “wrong” (see CPR 52.11). Neither surprise at a Hearing Officer’s conclusion, nor a belief that he or she has reached the wrong decision suffices to justify interference;

iii) The decision of the lower court will be “wrong” if the judge makes an error of law, which might involve asking the wrong question, failing to take account of relevant matters or taking into account irrelevant matters. Absent an error of law, the appellate court would be justified in concluding that the decision of the lower court was wrong if the judge’s conclusion was “outside the bounds within which reasonable disagreement is possible”;

iv) The approach required by the appeal court depends on a number of variables including the nature of the evaluation in question. There is a “spectrum of appropriate respect for the Registrar’s determination depending on the nature of the decision”, with decisions of primary fact at one end of the spectrum and multi- factorial decisions (of the type which the parties agree were made in this case by the Hearing Officer) being further along the spectrum.

v) In the case of a multifactorial assessment or evaluation, involving the weighing of different factors against each other, the appeal court should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions.

vi) An error of principle is not confined to an error as to the law but extends to certain types of error in the application of a legal standard to the facts in an evaluation of those facts. The evaluative process is often a matter of degree upon which different judges can legitimately differ and an appellate court ought not to interfere unless it is satisfied that the judge’s conclusion is outside the bounds within which reasonable disagreement is possible;

vii) Another variable to be taken into account will be “the standing and experience of the fact-finding judge or tribunal”. Expert tribunals are charged with applying the law in the specialised fields and their decisions should be respected unless it is quite clear that they have misdirected themselves in law. Appellate courts should not rush to find such misdirections simply because they might have reached a different conclusion on the facts

viii) The appellate court should not treat a judgment as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed; “The duty to give reasons must not be turned into an intolerable burden”. The reasons need not be elaborate. There is no duty on a judge, in giving her reasons, to deal with every argument presented by counsel in support of his case. It is sufficient if what she says shows the basis on which she has acted. The issues the resolution of which were vital to the judge’s conclusions should be identified and the manner in which she resolved them explained.

ix) In evaluating the evidence, the appellate court is entitled to assume, absent good reason to the contrary, that the first instance judge has taken all of the evidence into account.

It followed that ‘468 was valid, but ‘180 was invalid for certain goods.