Who: Here’s Great Ltd and Here Global B.V.
Where: The Trade mark Tribunal, Intellectual property Office
When: 4 March 2015
Law stated as at: 1 April 2015
What happened:
heresgreat.png Here’s Great Ltd filed a trade mark application for the logo here_image.png in class 35 advertising and marketing services. Here Global B.V. opposed the application based on eight earlier CTMs such as also for class 35 for advertising services, including location-based advertising services for example, based on section 5(2)(b) of the Trade marks Act 1994.
This states that the trade mark shall not be registered if it is similar to an earlier mark and is to be registered for goods or services identical or similar to the trade mark application and there is a likelihood of confusion on the part of the public.
Similarity of services
Here’s Great Ltd argued that the businesses of the parties were different: mapping versus recommendation of restaurants/cafes.
The tribunal held that its role was to consider the fair use of the marks as based on the services listed in the specifications. It referred to case law suggesting that goods can be considered as identical when the goods designated by the earlier mark are included in a more general category in a trade mark application. Most of the applicant’s services were considered to fall within the opponent’s “advertising services” and could as a result be considered identical services.
Distinctiveness of the opponent’s mark
Despite Here Global arguing that its marks had an average level of distinctiveness, the Tribunal considered that their distinctive character fell between low and moderate. The word “here” might have some significance relating to advertising in certain localities, but as no evidence was filed of use of the mark, it was not possible to conclude that any inherent distinctiveness had been enhanced.
Comparison of marks
The Tribunal held that both marks contained some degree of visual similarity, but there were also clear points of visual difference due to the presence of the word “great” in a different colour and the exclamation mark with the word “com.” Therefore it held that the applicant’s mark created a conceptual difference.
Likelihood of confusion
The Tribunal held that the differences between the marks were more than sufficient to prevent the average consumer who has imperfect recollection from directly confusing the mark. In relation to indirect confusion, the Tribunal held that the average consumer would realise that the applicant was using the ordinary word “heres” in the phrase “heres great” and not assume that the services provided by it were provided by the opponent, and therefore that there was no likelihood of confusion.
Decision
Subject to an appeal, the mark may proceed to registration.
Why this matters:
Although the opposition failed on other grounds, this case is a reminder that goods and services listed in a specification of a trade mark application can be considered as identical to an earlier mark’s specification when the goods and services designated by the earlier mark are included in a more general category.
This is particularly relevant if the marks are identical as this would mean double identity for the mark and goods and services, thus removing the need for the average consumer to be confused, before a trade mark application is refused or indeed for a finding of infringement.
