A recent decision of the Appointed Person has found fatal flaws in the Hearing Officer's assessment in a case relating to the marks VOLVO/REVOLVO. The case has been returned to the UK Intellectual Property Office (UKIPO) for a fresh assessment.
Application for REVOLVO
In 2010 Eriks Industrial Services Limited applied to register REVOLVO as a UK trade mark for bearings and parts and fittings covered under classes 7 and 12, as well as design consultancy services related to the aforementioned goods.
Opposition of the application
Volvo Trademark Holding Aktiebolag (Volvo) opposed the application under Sections 5(2)(b), 5(3) and 5(4)(a) on the basis of their earlier UK and Community trade marks for VOLVO, which covered a range of identical and similar goods/services in classes 7, 12 and 42.
The UKIPO rejected the opposition in its entirety finding that there was no likelihood of confusion regarding the class 12 goods. The grounds of opposition under Sections 5(3) and 5(4)(a) and relating to the goods covered by classes 7 or 42 were not considered, because, in the Hearing Officer's opinion, Volvo's position could be no stronger on those bases.
Volvo appealed the decision to the Appointed Person claiming that the Hearing Officer was wrong to have found no likelihood of confusion under Section 5(2)(b), and had fundamentally erred by failing to consider the opposition under Sections 5(3) and 5(4)(a).
In consideration of the case under the various grounds, the Appointed Person found as follows:
Section 5(2)(b) – likelihood of confusion
This ground of Volvo's appeal was dismissed. The Hearing Officer had concluded that there existed only a moderate degree of visual and aural similarity between the marks. This was on the basis that:
- REVOLVO was a single invented word of which VOLVO was not the dominant element;
- the viewing public would not dissect the mark into 'RE' and 'VOLVO'; and
- the marks had no conceptual similarity as VOLVO would be seen as an invented word with no meaning, whereas REVOLVO would be seen as an invented word suggestive of the word REVOLVE.
Volvo argued that the Hearing Officer had failed to take into account that the only difference between the marks was the nondistinctive prefix 'RE', and that the presence of the well known and recognised brand name VOLVO within the contested mark meant that, even if the Hearing Officer did find that REVOLVO was suggestive of the word 'revolve', he should nevertheless have found there existed a likelihood of confusion.
Volvo also argued that no evidence had been provided that the mark REVOLVO was suggestive of 'revolve'. The Appointed Person dismissed the latter argument noting that Volvo bore the onus of proving the opposition, and that it was seeking to challenge the weight the Hearing Officer had given to the evaluation of the average consumer's perception of the mark.
It was held that there had been no error of principle on the part of the Hearing Officer in assessing the similarity between the marks.
The Hearing Officer was entitled to take the view that the mark REVOLVO would be suggestive of the word 'revolve'.
The Appointed Person found that this assessment was based primarily on the fact that:
- 'revolve' was well understood to mean 'to roll', and evidence from both parties showed that one of the main purposes of a bearing is 'to roll';
- relevant consumers would understand that a bearing rotates in order to reduce friction; and
- no survey or other evidence was provided to show that the public would perceive REVOLVO in any other context.
Sections 5(3) and 5(4)(a) – reputation and passing off
Volvo's appeal under these two grounds was successful. The Hearing Officer had originally held the following :
- Section 5(2)(b): consideration of classes 7 and 42 involved the same arguments as class 12, and there would be no material change in the degree of care or consideration of the average consumer or a change in the conceptual evocation of REVOLVO.
- Section 5(4): due to the finding of no likelihood of confusion there would be no misrepresentation to make a valid claim under this ground.
- Section 5(3): despite Volvo clearly demonstrating the requisite reputation, due to the fact that the element 'volvo' would not 'stand out' in the contested mark it did not provide the necessary 'link' required.
On consideration of Volvo's appeal regarding Section 5(3), the Appointed Person felt it was not clear whether the correct assessment had been applied at first instance. Not only did the Hearing Officer seem to determine the nonexistence of a 'link' on the basis of an absence of a likelihood of confusion under Section 5(2)(b), but he had failed to consider that Volvo's reputation went much wider than class 12 goods, and had failed to take into account any other relevant factors, such as the uniqueness of the VOLVO mark. On this basis the Appointed Person found that the Hearing Officer had failed both to consider the grounds for opposition under Section 5(3) properly, and to give adequate reasons for rejecting it.
With regard to Volvo's appeal under Section 5(4)(a), the Appointed Person reiterated that this ground did not involve the same test as Section 5(2)(b), as it is dependant on actual 'use' of the mark and was to be assessed from the viewpoint of 'a substantial proportion of customers' (not the 'average consumer'). The Appointed Person agreed with Volvo's assertions that whilst the Hearing Officer had acknowledged Volvo's goodwill, he had in fact failed to assess its breadth, which extended to significant aftercare service and direct sales of genuine VOLVO parts.
The Appointed Person felt it was 'inescapable' that rejection of the Section 5(4)(a) ground had been based purely on a determination of the Section 5(2)(b) ground.
The opposition has now been returned to the UKIPO so a different Hearing Officer can assess it properly under Section 5(3) and 5(4)(a). It will be interesting to see whether a full assessment of the opposition on these grounds will be able to rotate the decision back into Volvo's favour.
The Hearing Officer must assess all grounds of opposition on their individual merits and not on the assessment of any other grounds. The onus on proving that an opposition is well-founded rests with the opponent.
Case details at a glance
- Jurisdiction: United Kingdom
- Court: UKIPO decision
- Parties: Volvo Trademark Holding Aktiebolag and Eriks Industrial Services Limited
- Citation: O-061-15
- Date: 02 February 2015
- Full decision: http://dycip.com/volvorevolve