Talk of the town
In 2013, the British company Argon Consulting & Management Limited filed an application to register the trade mark ROCHESTER for cigarettes in the UK. It was not opposed and the application was granted without incident. However, shortly after the registration certificate issued, Japan Tobacco (“JT”) applied to have the registration declared invalid on the basis of JT’s earlier registrations for the mark DORCHESTER. JT argued that ROCHESTER was closely similar, visually, phonetically and conceptually, to JT’s registered trade mark DORCHESTER and in view of the identity of the products concerned, there was a high likelihood of confusion.
The case was of particular concern to Argon since, in contrast to opposition proceedings, UK invalidation proceedings can have implications as regards the issue of infringement. Accordingly, Beck Greener was asked by Argon to defend the registration.
The parties filed evidence in support of their cases, following which the matter came to be heard by the UK IPO tribunal. The IPO found in favour of Argon. It accepted Argon’s argument that the conceptual differences between the marks were sufficient to offset any visual or aural similarities. JT’s action was accordingly dismissed and Argon’s registration upheld. Costs were awarded to Argon. So far, so unremarkable.
However, not content with the decision, JT appealed. Its primary ground was that the IPO tribunal had made the conceptual comparison between the marks at a too granular level and had failed properly to consider the relevant factors as to how marks should be compared at the conceptual level when calculating the risk of confusion.
The appeal was heard by Ian Purvis QC sitting as the “Appointed Person” (a specialist tribunal organised to hear appeals from UK IPO decisions). In arriving at his decision, Mr. Purvis took the opportunity of clarifying the law as to how tribunals should assess conceptual similarity and at what level of generality the comparison should be made. A link to his decision, which issued on 1st February 2017, is: here.
Mr. Purvis reaffirmed the principle set down in the decision of the European Court of Justice (as it then was) in Ruiz-Picasso v OHIM [C-361/04] (“Picaro” v “Picasso”). He derived from this decision the principle that lack of conceptual similarity is not merely a ‘neutral’ factor but can positively reduce the risk of confusion and may do so even when the marks in question are visually and aurally close.
JT had argued that because ROCHESTER and DORCHESTER are both towns in England and in the absence of any evidence that the general public has any specific knowledge of the nature of or features of those towns, it is at this conceptual level that they must be compared. Mr. Purvis disagreed. He found as follows:
In the present case, at a high level of generality, each mark could theoretically be said to convey the same concept – a town, or perhaps a town in Southern England. However, I do not believe that this is a reasonable way to understand the way in which the individual marks would strike the average consumer. The concept of JT’s mark is the town of Dorchester, not any old town in Southern England. It is clear and specific. The concept of the Proprietor’s mark is the town of Rochester. Once again, that is clear and specific and is a different concept from Dorchester. The conceptual difference will tend to reduce any risk of confusion. It is not necessary to establish any particular knowledge on the part of the average consumer about either town – no doubt each would give rise to different associations to different people. The point is that the concepts are specific and different because the towns are specific and different.
JT’s appeal was accordingly dismissed and the IPO’s decision upheld.
Ian Bartlett, with Susan Davey, both of Beck Greener, appeared and acted throughout for Argon.
