Topic: Brands
Who: Aveda Corporation (“Aveda”), Dabur India Ltd (“Dabur”), The Honourable Mr Justice Arnold
Where: High Court, Chancery Division
When: 18 March 2013
Law stated as at: 2 April 2013
What happened:
In a hearing on 22 August 2012 Estee Lauder’s Aveda cosmetics brand had opposed rival manufacturer Dabur’s 2010 trade mark registration for “DABUR UVEDA”. Dabur had attempted to register this mark in:
- use class 3 (for “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; deodorants for personal use”); and
- use class 5 (for “pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; foods and beverages which are adapted for medical purposes; air deodorising preparations.”).
Aveda’s claim was that there was infringement of three trade mark registrations which it already held for the mark “AVEDA” which covered the relevant classes. However, the Intellectual Property Office Haring Officer did not find a likelihood of confusion between the two marks and allowed Dabur’s application to continue to registration. Aveda appealed to the High Court.
The case came before Mr Justice Arnold on 6 March 2013.
What was the basis of Aveda’s appeal?
Aveda appealed on a number of points. However arguably the main ground of appeal was that the hearing officer had misinterpreted a case from the Court of Justice of the European Union (“CJEU”) – Medion AG v Thomson Multimedia Sales Germany & Austria GmbH.
Medion was a dispute about whether one company’s mark “LIFE” was similar to another’s mark “THOMSON LIFE”. In its judgment in Medion the CJEU had discussed the usual test for such composite marks in the following terms:
“the comparison may be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components…” (para 32).
In short, where part of a composite mark has a dominant role, the court should continue to look at the mark as a whole.
However it may be that greater weight can be given to that part of the mark when assessing whether the similarity of the marks would cause the relevant average consumer to be confused.
However the CJEU went on to suggest that there may be certain situations “beyond the usual case” when a consumer would not immediately consider the mark as a whole. Such a situation would arise where part of a composite mark has an “independent distinctive role”. An example of such a case would be as follows:
“[there] may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein.” (para 36)
In other words, a party adding its own company name to a word which is someone else’s trade mark (“Other TM”) could be more likely to confuse the public and infringe the Other TM if the Other TM continues to have an “independent distinctive role” in the composite brand.
So what had the hearing officer done?
The hearing officer had applied the judgment in Medion placing weight on the dominance part of the test. He found that “DABUR” and “UVEDA” were of equal prominence. “UVEDA” did not have a
dominant role, and so the mark “DABUR UVEDA” should be compared as a whole with “AVEDA”. He went on to find that on this basis, there was not enough similarity between these two marks to cause
confusion.
And what did the Judge decide?
Mr Justice Arnold applied Medion and disagreed with the hearing officer’s assessment that the usual case applied, as this was a situation in which “the average consumer, while perceiving a composite sign as a whole, will recognise that it consists of two signs, one or both of which has a significance which is independent of the significance of the composite whole”.
Arnold J cited a number of cases where this had been applied and para 36 of the CJEU’s judgment above. He concluded that “there can be little doubt that the average consumer who was familiar with AVEDA beauty products would be likely to be confused by the use of DABUR UVEDA in relation to identical goods”and found in favour of Aveda.
But the mark was “DABUR UVEDA”, not “DABUR AVEDA”, wasn’t it?
Yes it was, and this is the more controversial aspect of Arnold J’s judgment. The principle in Medion had only previously been considered to apply where the disputed part of the composite mark was identical to the Other TM.
In this judgment Arnold J rolled this principle out to elements of a mark which were only “similar” to the Other TM, on the basis that “In my judgment it makes little difference that the second word in the composite mark is UVEDA rather than AVEDA. As the hearing officer rightly accepted, UVEDA is both visually and aurally very close to AVEDA. The human eye has a well-known tendency to see what it expects to see and the human ear to hear what it expects to hear.
Thus it is likely that some consumers would misread or mishear UVEDA as AVEDA. “
Why this matters:
This is the first time that the Medion case has been applied in this way. Other commentators on this ruling have noted that Arnold J did not consider the principle that the average consumer pays more attention to the beginning of a word mark than the end and have speculated on whether he may have reached a different conclusion had he done so.
This area of trade mark law should be borne in mind by marketers when creating a new brand name which resembles and/or capitalises on an established brand. Based on this judgment, tweaking an established brand name and combining it with a manufacturer’s distinctive own name will clearly carry a higher degree of risk.
This whole area is soon to be the subject of further judicial scrutiny in the CJEU following an appeal from the General Court in the equally controversial BIMBO DOUGHNUTS case, where the GC ruled that “BIMBO DOUGHNUTS” was confusingly similar to “DOGHNUTS”. It is to be hoped that the CJEU can lend some further clarity to this area when the decision in this case is handed down.
