Who: Alexander House Financial Services and BinckBank N.V.
Where: the Intellectual Property Office
When: 7 November 2014
Law stated at: 1 December 2014
Alexander House Financial Services (the “Applicant”) applied for registration as a community trade mark (“CTM”) of ‘SMART ALEX’ for class 36 (financial services) and class 42 (technological services). BinckBank N.V (the “Opponent”) opposed the application on the grounds of s 5(2)(b) of the Trade Marks Act 1994 based on their earlier CTM registrations for ‘ALEX’ in class 36.
Opponent’s Marks: (click here for the image) ALEX
Applicant’s mark: SMART ALEX
The Applicant argued that the Opponent’s case should be rejected because it had not yet used ALEX in the UK in relation to the relevant services. This was because the Opponent was not authorised by the Financial Conduct Authority (FCA) to conduct the relevant business, so its use of ALEX in the UK would be unlawful.
The Hearing Officer (HO) rejected these arguments. If a mark has been registered for 5 years, it can be subjected to cancellation proceedings on grounds of five years’ non-use. However in this case the Opponent’s marks had not been registered for five years at the relevant time for these proceedings, so this did not arise.
In relation to the opposition under s5(2)(b), this states that a trade mark shall not be registered if (i) it is similar to an earlier mark, (ii) the proposed registration is in respect of goods or services identical or similar to those for which the earlier trade mark is protected and (iii) there exists a likelihood of confusion on the part of the public.
In this context, the HO referred to Sabel v Puma which held that the average consumer perceives a mark as a whole and does not proceed to analyse its various details.
SMART prefix not distinctive
The HO held that the Opponent’s earlier ALEX marks had no distinctive or dominant components and that the distinctiveness lay in the word ALEX. With regards to the Applicant’s application for ‘SMART ALEX’, the HO considered that the first word ‘SMART’ was used as an adjective and was therefore innately descriptive and not distinctive.
Having made this finding, the HO dealt first with possible direct confusion and then with possible indirect confusion.
With regards to direct confusion (where the marks are mistaken for each other), the HO held that the average consumer would notice there was a difference between the marks and would not imperfectly recall or directly confuse them.
Indirect confusion likely
In relation to indirect confusion (where the consumer has recognised the later mark is different from the earlier mark but nevertheless concludes incorrectly that the marks are from the same or economically linked companies), the HO held that because of the close similarity of the services covered by the Opponent’s registrations and the Applicant’s application and because of the descriptiveness and lack of distinctiveness of the SMART prefix, the average consumer would be likely to construe that the services of the applicant were those of the opponent or an economically linked company to the opponent.
On that basis the HO allowed the Opponent’s opposition.
Why this matters: This is an important reminder of the principle whereby a lesser degree of similarity between the marks can be offset by a greater degree of similarity between the respective services when determining likelihood of confusion. The decision also underlines that depending on how similar the relevant goods or services are, the protection provided by a trade mark registration may extend to marks with added words.