Handsam Ltd filed a UK trade mark application for the Logo above left (the “Logo”). This was opposed by TripAdvisor LLC on the basis of its word marks TRIPADVISOR and the logo above right on the basis of a likelihood of confusion (Section 5(2) of the UK Trade Marks Act 1994) and its marks have a reputation (Section 5(3) of the Act).
The Hearing Officer initially held that the Logo should be registered in relation to certain goods and services on the ground that there was no confusion with TripAdvisor’s marks. However, the Hearing Officer also held that the Logo should be not be registered in relation to other goods and services.
The opposition succeeded in relation to:
- Class 16: Magazines; Books; Leaflets; Printed guides.
- Class 41: Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.
but failed in relation to:
- Class 16: Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.
- Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.
- Class 41: Advisory services relating to education.
- Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.
Consequently, TripAdvisor appealed to the High Court on the grounds that, in relation to the allowed goods and services, the Hearing Officer had failed to conduct the necessary global assessment required by s.5(2). It was also submitted that the Hearing Officer had incorrectly applied the case law when considering the link necessary to bring an opposition within s.5(3).
Was the global assessment conducted correctly?
TripAdvisor submitted that the Hearing Officer had “carried out an improperly truncated global assessment in respect of the allowed goods and services, which resulted in relevant factors being entirely omitted, not simply being given too little weight” in relation to s.5(2).
Firstly, the judge held that the Hearing Officer had been entitled to decide that the marks could not be directly mistaken for one another. The judge said that there could be “no appeal” from that decision based on the misplaced criticism in relation to the Hearing Officer’s consideration of indirect confusion. The judge said that the Hearing Officer had merely considered indirect confusion as an alternative argument, rejecting that there was any direct confusion.
TripAdvisor also submitted that the Hearing Officer had not taken his earlier findings forward into the global assessment. The judge held that this was wrong and the Hearing Officer had considered the overall impression of each mark, including the visual, aural and conceptual similarity. The judge held that it was unnecessary to repeat each point of a decision every time if previously identified and discussed.
The judge held that the Hearing Officer had not failed to undertake a global assessment and, in his decision, “the attack on the Decision [was]…in substance an attempt to challenge his value judgment by rearguing the case that was originally lost.” An appeal must be treated as a rehearing rather than a review. Therefore, the appeal in relation to s.5(2) was rejected.
Absence of a link?
For the case to succeed under s.5(3), a link must be shown between the Logo and TripAdvisor’s earlier marks. TripAdvisor submitted that the Hearing Officer made “an entirely unjustified step…to determine that the link will only arise when the opposed sign [the Logo] is used in relation to particular goods and services.” It was submitted that the Hearing Officer should have followed the judgment of Intel Corporation Inc v CPM (UK) Ltd and made a global assessment about the existence of a link, i.e. that the “link is not a concept coupled only to the similarity of goods and services.” The Hearing Officer had found that there was no link in relation to the goods and services at hand and therefore the heads of damage could not arise. He further said, as an alternative reasoning, that had there been a link, use of the Logo would still not have taken unfair advantage of, or have been detrimental to, the repute or distinctive character of TripAdvisor’s marks. The judge found that the Hearing Officer had not erred in coming to this decision or in his reasoning and had considered the judgement of Intel.
The Hearing Officer also broke down the goods and services for separate consideration as, in doing so, “a link might actually [have been]…established when certain goods and services [were]…considered separately”. The judge said that this showed it was “inconceivable” that the Hearing Officer had not had all of the factors set out in Intel in mind. The judge said that in order to carry out a global assessment, the Hearing Officer needed to be aware of the specifications of the Logo and TripAdvisor’s marks. As the Hearing Officer had broken down the goods and services, he clearly was aware of these. Therefore, the judge held that TripAdvisor’s appeal in relation to s.5(3) appeared to merely be an attempt to “re-run” the case. The appeal was dismissed accordingly.
Consequently, the usual principle of hearing an appeal was upheld – namely that an appeal should not solely be a rehearing. An appeal should only be allowed if a hearing officer has made a distinct and material error of principal in making his decision or that the decision is clearly wrong, “a decision which no reasonable hearing officer could have reached”. In the instant case, the judge held that the Hearing Officer had not made an error of principle and his decision was not “clearly wrong”. Therefore, the appeal was dismissed in its entirety.