Who: Volvo Trademark Holding Aktiebolag, Eriks Industrial Services Limited and the Appeal Officer
Where: the Intellectual Property Office
When: 30 January 2015
Law stated as at: 3 March 2015
What happened:
Eriks Industrial Services Limited (Eriks) applied to register the sign REVOLVO for bearings and fittings in Classes 7 and 12. Volvo Trademark Holding Aktiebolag (Volvo) opposed the application on the basis of their prior trade mark registrations and s5(2)(b), s5(3) and s5(4)(a) of the Trade Marks Act 1994. Last year the Hearing Officer (HO) rejected the opposition and Volvo appealed the decision to the Appeal Officer at the Intellectual Property Office.
The Evidence
Volvo presented voluminous evidence at first instance about its brand, first adopted in 1915, including its use in bearings for trucks, buses, and construction equipment for instance and its aftermarket business. Eriks explained that REVOLVO had been used by a company within Erik’s group of companies since 1972 in relation to bearings.
Section 5(2)(b)
This section states that a trade mark shall not be registered if it is similar to an earlier mark and is to be registered for goods or services identical with or similar to those for which the earlier mark is protected, and there exists a likelihood of confusion which includes a likelihood of association with the earlier trade mark. Prof Annand (the Appeal Officer) agreed with the HO that the average consumer of bearing/parts would be a mechanic or other technically skilled person.
The HO held that while VOLVO was to all intents and purposes an invented word, REVOLVO had an evocative effect based upon the word REVOLVE and that VOLVO was not the dominant component of REVOLVO. The HO did not consider that the marks were highly similar despite their visual and aural similarity. Volvo argued on the appeal that the HO had no evidence on which to base his assumption that the public would perceive REVOLVO as an evocation of “revolve”. However, as none of the parties had provided evidence on this point, Prof Annand held that the HO was entitled to form a view on this point.
Volvo also made arguments that the HO failed to take into account that the only difference between the marks was the prefix RE and that the HO mispronounced REVOLVO. Volvo also submitted that REVOLVO contained VOLVO within it and therefore, that even if the HO had been correct that REVOLVO was evocative of the word “revolve”, he should have found that there was a likelihood of confusion.
In response to these arguments Prof Annand held that Volvo had sought to challenge the weight the HO attributed to his evaluation of how the average consumer would perceive the marks and that in her judgment, the HO was entitled to take the view he did and thus dismissed this aspect of the appeal.
Section 5(3)
This section states that a trade mark which is identical or similar to an earlier trade mark shall not be registered if the earlier trade mark has a reputation in the UK and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
Prof Annand referred to CJEU case law which made it clear that the degree of similarity of the marks required for s 5(2)(b) is not the same as the degree of similarity of marks required for s 5(3) as this may be less for s.5(3). Volvo criticised the HO’s failure under s5(3) to globally assess the likelihood of a link according to all the relevant factors specified in Intel Corporation v CPM United Kingdom C-252/07. In Intel the CJEU held that “the fact that for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind, is tantamount to the existence of such a link”.
Prof Annand allowed the appeal on this ground as it was not clear that the HO had applied the correct standard in determining the non-existence of a link under this section.
Section 5(4)(a)
Under this section a trade mark may not be registered if its use in the UK is liable to be prevented by a law protecting a prior unregistered mark (such as the law of passing off) used in the course of trade.
Prof Annand agreed with Volvo that this is not the same test as for s5(2)(b). Satisfying the section 5(4)(a) requirement was dependent on use, and the viewpoint to adopt was that of a substantial proportion of customers and not the average consumer.
Volvo argued that, though their brand was best known for the design and sales of cars, buses and trucks, their goodwill also included a significant aftercare service including Volvo part for cars, trucks etcetera.
Prof Annand allowed this aspect of the appeal based on the HO’s decision to reject this ground based only on his determination of s 5(2)(b).
Decision
Prof Annand remitted the decision to the Registrar for the grounds of opposition under section 5(3) and s5(4)(a) to be determined by a different HO.
Why this matters:
It is fairly common to see trade mark applications being refused based on s 5(2). This case is a reminder that sections 5(3) and 5(4) can independently have the effect of knocking out a trade mark registration.
It will be interesting to see the decision reached by a different HO and whether, due to Volvo’s significant reputation, the distinctiveness of its marks will be regarded as liable to be affected by the registration of REVOLVO (s5(3)) and/or whether the registration for REVOLVO will be regarded as passing off under s5(4).
