SC Prodal 94 SRL v Spirits International NV

On an appeal from the Trade Marks Registry, the court should respect the specialist tribunal’s assessment and intervene only for a distinct and material error of principle or a significant error in assessing the law or facts. The likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994 is assessed globally, having regard to the marks’ overall visual, aural and conceptual impressions, imperfect recollection and the relevant consumer. An appellate court should not dissect a carefully reasoned decision or substitute its own assessment merely because it might have reached a different conclusion. Visual similarity may arise from the overall structure of invented, foreign-sounding words, including their shared beginnings, endings and the position of their differences.

SC Prodal 94 SRL appealed against a decision of the Hearing Officer, sitting for the Comptroller General of Patents, Trade Marks and Designs, dated 23 April 2003. The Hearing Officer had upheld Spirits International NV’s opposition to registration of two vodka labels featuring the word STALINSKAYA, relying principally on section 5(2)(b) of the Trade Marks Act 1994 and earlier marks prominently featuring STOLICHNAYA.

The appellant accepted that the Hearing Officer had stated the applicable legal principles but argued that he had failed to apply them properly, particularly in relation to other Russian-sounding vodka names, existing registrations and conceptual similarity. The central issue was whether the Hearing Officer had made a material error justifying appellate intervention.

1. Appeal dismissed. The Hearing Officer had correctly stated the principles governing section 5(2)(b) and had applied them in a clear and well-reasoned decision.

2. The appellate function was governed by REEF Trade Mark [2003] RPC 101. An appeal from the Registry is not a rehearing. Particular respect must be given to the specialist tribunal’s factual conclusions and expertise. The court should be reluctant to interfere absent a distinct and material error of principle, or a significant departure from a proper assessment of the law or facts.

3. The Hearing Officer had not treated the marks as conceptually identical merely because both had a Russian or East-European character. He was entitled to regard STALINSKAYA and STOLICHNAYA as invented words with no particular meaning for many United Kingdom consumers, and to assess their conceptual similarity on that footing.

4. The visual comparison was properly based on the marks’ overall structure and the possibility of imperfect recollection. The shared beginnings and endings, similar apparent length and differences situated in the middle of the words were relevant to the overall visual impression. The Hearing Officer was entitled to find considerable scope for visual confusion.

5. The judge considered that aural similarity might have been as strong as visual similarity, rather than weaker. That observation did not disclose an error requiring intervention and would have led to the same result.

• High Court (Chancery Division): appeal from the Hearing Officer’s decision dated 23 April 2003; appeal dismissed.