Trade Mark Hearing Officer’s Decision Vaporised by High Court

The High Court has overturned a decision of the Registrar of Trade Marks in which an opposition against an application for a stylised mark featuring the words “VAPE & CO” (above left) was upheld. The opposition was filed by London Vape Company Ltd’s based on their stylised UK registration featuring the words “THE” (above right).

Registry Decision

The Hearing Officer had originally upheld the opposition in its entirety, deciding that, although the Opponent’s mark had a very low degree of distinctive character, there was a sufficient degree of similarity between the two marks to amount to a likelihood of confusion. His finding was also based on the identical nature of the goods in question and the similarity of the services in the Applicant’s Mark to the goods in the Earlier Mark.

The Applicant appealed asserting that the Hearing Officer had erred in law because he had not taken into account the fact that the common components between the two marks were elements with a very low degree of distinctiveness in the context of the goods and services at issue (i.e. the vaping market).

High Court’s finding

The High Court upheld the appeal. In reaching his decision, Birss J. found that, although the Hearing Officer had considered the non-distinctive nature of the Opponent’s mark in reaching his conclusion, he had failed to consider whether the common elements between the two marks – “VAPE” and “CO” – were themselves elements with a low distinctiveness, either alone or in combination. Having found that these common elements were indeed only distinctive to a low degree, Birss J. went on to say that the differences between the two marks needed to be considered more closely as they would take on a greater significance for the average consumer than they might otherwise have done.

Upon considering the differences between the marks, namely the different stylised aspects of each mark, Birss J. commented that although these were not remarkable, the fact remained that these aspects were entirely different. He therefore considered that from the point of view of visual similarity the likelihood of confusion was low.

In terms of conceptual similarity he found that the concept the two marks shared was entirely down to their non-distinctive elements which did not lead to a likelihood of confusion.

In terms of aural similarity, Birss J. stated that this presented the Opponent’s best chance because the marks sounded relatively similar and the visual differences between the two marks would not be present to allow a consumer to differentiate between the two marks. Nonetheless despite these similarities Birss J. noted that what the two marks shared was entirely non-distinctive when it was borne in mind that both related to electronic cigarettes.

On this basis the High Court found that there was no likelihood of confusion and the appeal was upheld.


Birss J. made a point of making the following emboldened and underlined statement in his judgement: “if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion“. This resulted in him finding differences between the two marks.

Case Ref: (2017) EWHC 3393