KAREN LEE [2016] ATMO 19

This matter concerned the application by Karen Lee to register the below stylised HAS trade mark for electrical apparatus in Class 9.

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The Examiner initially rejected the HAS trade mark on the basis of the below prior registration.

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At the Hearing, the applicant argued that the trade marks were not deceptively similar and that its proposed amendments to the goods covered under its trade mark were sufficient to allow the two marks (the applicant’s mark and the cited mark) to coexist.

The Hearing Officer noted that the cited mark has an earlier priority date and held that the Examiner’s decision that the amendment to the applicant’s goods would not be sufficient to overcome the overlap in goods was correct.

Accordingly, the final determination to be made was whether the Hearing Officer considered that the trade marks were deceptively similar. On this, the Hearing Officer held that there was likely to be ‘contextual confusion’, that is, the common ‘HAS’ element would be likely to lead consumers to wonder if the goods bearing the trade marks originate from the same trade source.

The Hearing Officer came to this view by noting that the ‘HAS’ element is the first of the cited mark (which carries added importance) and was the entirety of the applicant’s mark.

Given the contextual confusion, the Hearing Officer upheld the objection and refused registration of the applicant’s trade mark.

To view the Office decision, click here.