The English High Court has extended the protection potentially available to brands owners to include instances where marks similar to their own are used as part of a more complex composite sign.
By its decision in Medion v Thomson (Case No. C-120/04), the CJEU had previously acknowledged that an earlier identical mark used by a third party in a composite mark could result in a likelihood of confusion if that earlier mark had an independent distinctive role (without necessarily constituting the dominant element). In Aveda Corporation v Dabur India Ltd  EWHC 589, the English Court has confirmed that such confusion may arise even when a mark merely similar to an earlier trade mark is used as part of a composite sign.
The Applicant had applied for the mark DABUR UVEDA for goods in Classes 3 and 5. The Opponent raised objection against both classes based on its earlier registrations for the word AVEDA. The Hearing Officer dismissed the Opposition on the basis that the UVEDA element was not the dominant feature of the mark applied for. The Opponent appealed to the High Court.
Both the Hearing Officer and the Appeal Judge (Arnold J) considered the similarity of certain goods and their meaning (of ever-increasing importance following the decisions in Stichting BDO v BDO Unibank Inc  EWHC 418 and IP TRANSLATOR (Case No. 307/10)), but the most pivotal aspect of the appeal was to what extent the marks could be held to be confusingly similar.
Ultimately Arnold J held that the Hearing Officer had not correctly applied the CJEU’s guidance in Medion v Thomson. He had focused on the ‘dominant element’ test of earlier cases (e.g. Matratzen Concord GmbH v OHIM (Case No. C-3/03)), and not taken due account of the ‘independent distinctive role’ guidance given in the later case.
In Medion v Thomson, the CJEU had expressly stated that the test of confusion should not be subject to a requirement that the overall impression produced by a composite sign be dominated by the part of it represented by the earlier mark. The fact that the earlier mark retained an independent distinctive role could be sufficient.
As regards extending that concept to include similar marks, Arnold J considered that although not expressly acknowledged by the CJEU in Medion v Thomson, the underlying logic was equally applicable. He held that the Hearing Officer had failed to ask whether the average consumer would perceive the UVEDA verbal element to have any significance independently of the application as a whole (DABUR UVEDA), and whether that could lead to confusion. In Arnold J’s opinion, both eventualities were quite likely.
Although the case confirms that it is possible to extend the approach used when comparing composite signs with earlier marks that are incorporated within them to include marks that are merely similar, the specific facts of this case should be noted: the common elements to be compared were AVEDA and UVEDA, highly similar word marks differing only in a single vowel (which some consumers are likely to pronounce identically). Indeed, Arnold J noted that the Hearing Officer had at one point in his decision mistakenly written AVEDA instead of UVEDA; and the UKIPO’s database had incorrectly recorded the case as relating to the mark DABUR AVEDA.
It should also be remembered that although the test for assessing similarity of marks is identical for the purposes of Opposition/Invalidation proceedings and infringement actions, it is always easier to assess similarity in the former: the owner of the mark being attacked has gone on record and essentially acknowledged what its mark is. In infringement cases it may be more difficult to get agreement between the parties as to what mark is actually being used, particularly when considering a complex, composite mark. If the present case were being assessed in terms of infringement, and if no application had been filed, the Applicant may have contended that the ‘mark’ being used was merely DABUR, its main house brand.