High Court finds no likelihood of confusion where non-distinctive elements the only similarities between marks

Nicoventures Holdings Ltd v The London Vape Company Ltd ('LVC')* (Birss J; [2017] EWHC 3393 (Ch); 21.12.17)

Birss J upheld Nicoventures' appeal from the Hearing Officer, finding that there was no likelihood of confusion under Section 5(2)(b) between LVC's mark and the mark applied for by Nicoventures.

Nicoventures applied to register the following mark in the UK in respect of, among other things, "electronic cigarettes" in Class 34 and "retail store services connected with the sale of e-cigarettes" in Class 35:

The Hearing Officer upheld VPC's opposition based on its earlier mark which was registered in respect of "electronic cigarettes" in Class 34, as shown below:

The Hearing Officer found that there was a likelihood of confusion under Section 5(2)(b).

Birss J was of the view that the Hearing Officer was correct to conclude that the components "THE" "VAPE" and "co" were entirely descriptive and non-distinctive, but that he had erred in not taking this into account in his assessment of the likelihood of confusion. Birss J referred to Whyte and Mackay v Origin [2015] EWHC 1271 (Ch) in which Arnold J said that "…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". Although the marks in the present case had a high degree of visual, aural and conceptual similarity, that similarity arose from the common elements of the terms VAPE and CO and the combination of those two words, which individually and in combination were descriptive and non-distinctive in respect of the relevant goods. Birss J said that even taking into account imperfect recollection, the differences in the two marks would take on a greater significance for the average consumer than they might otherwise. Although the stylised aspects of each mark were not very remarkable, they were entirely different. The Judge therefore held that there was no likelihood of confusion and that that the opposition should be dismissed.