- Dreams Limited opposed the registration of the mark LIVINGDREAMS in Class 20 based on earlier DREAMS marks in Classes 20, 24 and 35
- The UKIPO upheld the opposition, finding, among other things, that there was a likelihood of direct confusion
- The appointed person dismissed the appeal; among other things, he agreed with the hearing officer that, in this instance, “the words speak louder than the device”
Phillip Johnson, sitting as an appointed person, has issued a decision in relation to an appeal against a successful opposition to a UK designation of an International Registration for the mark LIVINGDREAMS (and device).
In May 2017 Nicole Hoch (‘the applicant’) sought protection in the United Kingdom of International Registration No 1356340 for the mark LIVINGDREAMS (and device) in Class 20 for “furniture; garden furniture”.
On publication, Dreams Limited (‘the opponent’) filed an opposition under Section 5(2)(b) of the Trademarks Act 1994, relying on identity or similarity between the marks and between the goods. The opponent relied on three marks: one word mark and two word-and-device marks consisting of, or containing, the word ‘dreams’, registered in Classes 20, 24 and 35, covering furniture and related services.
UK Intellectual Property Office decision
The UK Intellectual Property Office upheld the opposition. The earlier marks had not been registered for over five years, so were not subject to a request for proof of use. The hearing officer concentrated her analysis on the earlier word mark because it was the most similar to the later mark, had no stylisation and arguably had the broadest specification. If the opposition was therefore to fail in relation to this mark, it would also fail for the two word-and-device marks.
The hearing officer defined the average consumer as a member of the public who would undertake the purchasing process in a retail environment, or through a website or catalogue. The hearing officer held that the purchase would hold mostly visual considerations, but include aural aspects. The level of attention for the average consumer was deemed to be above average, but not of the highest degree. The hearing officer found that the specification of the later mark was identical to some of the goods which the earlier mark covered.
When considering the global assessment of the marks, the hearing officer held that the earlier mark and the later mark were visually similar to a medium degree and aurally similar to a medium degree. The hearing officer concluded that the later mark had no clear or unambiguous conceptual meaning. The hearing officer held that the later mark could be perceived by the average consumer as meaning ‘dreams which are alive’, or intended for goods for the living room alongside the concept of wishes/dreams. The hearing officer found that the first potential concept would be similar to the earlier mark to a reasonably high degree, whilst the second potential concept would be similar to the earlier mark to a very high degree.
In summary, the hearing officer focused on the distinctiveness of the marks. She held that the distinctiveness for the earlier mark varied depending on the goods in question. For example, the earlier mark would have low distinctiveness in relation to beds, but the level of distinctiveness would be normal for other goods in the specification. The hearing officer held that, if the word ‘living’ in the later mark was perceived as having low distinctiveness in relation to the goods, there would be a likelihood of direct confusion. This is because the average consumer relies on imperfect recollection when recalling a mark and could directly confuse the earlier and later marks. If, however the consumer recalled the differences between the marks, or did not perceive the word ‘living’ to be of low distinctiveness, there would be a likelihood of indirect confusion. The hearing officer also stated that the consumer may perceive the mark to be an extension to the DREAMS brand, such as an expansion into living room furniture.
The applicant appealed against the decision, to the appointed person. The appeal had several grounds.
The first was in relation to the identity of the average consumer and the purchasing process. The applicant stated that her highly-priced furniture would most likely be bought at a shop rather than online. The appointed person held that the extent of the applicant’s business in the marketplace was irrelevant. The most important factor was what was covered by the specifications of the earlier and later marks. Both marks contained “furniture”, so the purchasing process should include furniture at all prices and the hearing officer’s finding in relation to the average consumer should not be questioned because of the applicant’s actual trade.
The applicant also challenged every aspect of the hearing officer’s comparative analysis between the earlier and later mark. The most significant are as follows.
The applicant suggested that the word ‘living’ was the dominant and distinctive part of the mark, whilst ‘dreams’ was subordinate. The hearing officer had not suggested that either element was dominant or distinctive and had stated that the average consumer would perceive both words. The appointed person therefore had no reason to overturn the hearing officer’s findings.
The applicant also suggested that the hearing officer was incorrect in her comparison of visual similarity. The applicant suggested that the device and the word were equally prominent, but that the word element ‘LIVINGDREAMS’ was more significant than the device. However, the appointed person stated that the size of the device was similar to the lettering in the later mark and agreed with the hearing officer that, in this instance, “the words speak louder than the device”.
The applicant did not provide any submissions regarding aural similarity between the marks which were sufficient to overturn the hearing officer’s findings.
The applicant argued that LIVINGDREAMS meant “the dream of beautiful living”. This was similar to the explanation provided to the hearing officer. Even though the applicant had a clear idea of the conceptual meaning of the mark, the applicant did not provide any submissions to show that the hearing officer had made an error with her findings.
It was submitted by the applicant that the word ‘living’ was not a typical brand extension term. The appointed person accepted that it could be a brand extension term, but was less convinced about the hearing officer’s finding that the mark could be used in relation to furniture for the living room. The appointed person agreed with the finding of indirect confusion, so he concluded that it was immaterial whether he agreed with the latter point.
The appointed person therefore concluded that there would be a likelihood of confusion between the two marks and rejected the appeal. The opponent was awarded costs in its favour.
Applicants should be aware of how their brand is or is likely to be perceived by consumers and competitors. Relying solely on their own interpretation could result in oppositions.
It also highlights the need for appellants to ensure that their submissions show an error in a first-instance decision in order to have a prospect of overturning it.
Laura Nend, Chris McLeod
Elkington + Fife LLP
This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe