In Wella Corporation v Alberto-Culver Company [2011] EWHC 3558 (Ch), the UK High Court upheld the decision of a UK Intellectual Property Office Hearing Officer who rejected the application by Wella Corporation to invalidate the Alberto- Culver Company mark FUNKY SHAPER based on Wella’s earlier Community trade mark for SHAPER.

BACKGROUND

In 2009, Alberto-Culver Company (Alberto) had successfully registered the UK trade mark FUNKY SHAPER for hair care goods in Class 3. Wella applied under Section 47(2)(a) of the Trade Marks Act 1994 (TMA) for the mark to be declared invalid on the basis of Wella’s earlier CTM for SHAPER, registered in 1998, also for hair care goods in Class Wella relied on Sections 5(2)(b) and 5(3) of the TMA.  

The Hearing Officer rejected Wella’s application. Although he agreed that the respective goods were identical and that the two marks had clear similarities, he held that there was no likelihood of confusion on the part of the average consumer as neither mark would be seen as indicating origin at the date of filing of the opposed mark. The Hearing Officer was not impressed by either Wella’s evidence of use, nor by the inherent distinctiveness of either the SHAPER or FUNKY SHAPER marks, finding that the FUNKY element was merely descriptive and laudatory.  

Wella appealed the decision under Section 5(2)(b) to the High Court on three grounds: i) that a finding that SHAPER was not distinctive was tantamount to the suggestion that its mark was invalid, and that invalidity was not open to the Hearing Officer as a matter of law; ii) that a finding that FUNKY was descriptive and laudatory meant that FUNKY SHAPER was invalid; iii) that the Hearing Officer misapplied the law.  

DECISION

Judge Birss QC held that the Hearing Officer found correctly that Wella’s mark lacked all distinctive character as the evidence produced failed to show that the mark had acquired distinctiveness through use at the date the opposed mark was filed. Since this was a matter specific to a particular point in time, and not a finding of invalidity, the Hearing Officer had jurisdiction to rule on the matter.  

HHJ Birss noted that the evidence of use showed that the mark SHAPER was effectively a sub-brand for the well-known hair care brand Sebastian. Accordingly, the Hearing Officer held that the consumer would see the mark SHAPER as describing a particular type of shaping product originating from the Sebastian brand, a conclusion HHJ Birss also supported. An example of how the products were marketed is shown here.

In contrast, Alberto’s use of the FUNKY SHAPER mark is illustrated here.

Alberto presented evidence to show that other traders were using the word “shaper” descriptively. This fact, which was not disputed by Wella, is what led to the finding that Wella’s mark had low or very low distinctiveness. On this basis, HHJ Birss held that it was open to the Hearing Officer to rule that the mark lacked all distinctiveness. Accordingly, he dismissed the first ground of Wella’s appeal.  

As to the second ground of appeal, since neither SHAPER nor FUNKY were distinctive, HHJ Birss noted that the Hearing Officer concluded correctly that neither mark would be viewed as an indication of origin and that there was, accordingly, no likelihood of confusion.

On the basis of these two findings, HHJ Birss dismissed the third ground as he found that the Hearing Officer had reached the necessary factual conclusions based on the evidence presented before him.

COMMENT

Wella, in deciding to challenge Alberto’s mark, was effectively caught between a rock and a hard place. It was unable to launch a potentially more effective attack on the basis that the later mark was non-distinctive or descriptive because it would be tantamount to saying that Wella’s similar registration SHAPER suffered from the same deficiencies. Wella therefore had to rely on its own mark’s acquired distinctiveness. However, if the distinctiveness of an earlier mark is found lacking at the relevant date (i.e., at the time of the opposed mark’s application) then the likelihood of confusion will be less, thus increasing the chances that the challenge will fail, as was the case here.