A pair of recent Appointed Person decisions, both involving the question of similarity between brands of cigarettes, have offered an interesting reminder of the possible limitations of conceptual similarity, as opposed to its more popular cousins, aural and visual.
The first decision concerns the unsuccessful attempt by GRE Grand River Enterprises Deutschland GmBH to oppose UK applications for MARK 10 and MARKTEN (covering cigarettes and related terms in class 34), on the basis of an earlier registration for MARK ADAMS NO 1 with identical class coverage.
The Appointed Person (Phillip Johnson) agreed with the Hearing Officer that the marks are not conceptually similar. He suggested that the MARK element in the applications could refer to, amongst other things, “a score (a mark of 5 out of ten), a blemish (there is a mark on the dress), a product number (the Mark IV tank used in the First World War), a point on the ground (take your mark)…”, and so on. The MARK element in the Opponent’s earlier registration could only be a name, due to the presence of the ADAMS element.
The Opponent had asserted that no rational observer would make a finding of nil conceptual similarity in this case. Mr Johnson noted, as an aside, that a finding of no conceptual similarity ought to be viewed as a finding that the conceptual relationship between the marks is “too remote to be legally significant”.
The second decision, handed down by Iain Purvis QC, discussed the conceptual similarity between the registered mark ROCHESTER and an application for DORCHESTER, both for smoking apparatus and related paraphernalia in class 34.
The Opponent contended that each mark conveyed the conceptual meaning of a small market town in the south of England. Mr Purvis objected to this reasoning and, in keeping with the Hearing Officer, reminded us of the importance of not taking too general a reading of a trade mark’s conceptual meaning. Following Sabel v Puma, Mr Purvis held that the conceptual meaning of Dorchester is the town of Dorchester, not the concept of small market towns in the south of England generally. He concluded, “the point is that the concepts are specific and different because the towns are specific and different”.
The discussion of conceptual similarity in the decisions outlined above serves as a reminder, along with the advent of vaping, that where there is smoke there is not always fire.