The Lunan Group Ltd v Edwin Co Ltd

On an appeal from a trade mark hearing officer, the High Court should not substitute its own assessment merely because it would have reached a different conclusion. Intervention requires a distinct and material error of principle or a decision that is clearly wrong.

In assessing likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994, genuine parallel trading in the relevant market without evidence of actual confusion may be an important factor. The relevant market is not necessarily confined by the classes specified in the applications. Visual similarity must be assessed by considering the mark as a whole; visual perception does not become more blurred towards the end of a word.

The Applicant appealed under section 76 of the Trade Marks Act 1994 against two determinations made on 6 December 2002 by the Registrar’s hearing officer. The oppositions concerned applications to register FIORELLI in Classes 9, 14, 18 and 25. The Respondent relied on its earlier FIORUCCI mark and section 5(2)(b), alleging similarity of the marks, identical or similar goods and a likelihood of confusion.

The hearing officer upheld both oppositions. The appeals raised whether his evaluation involved a material error of principle, particularly in assessing visual similarity and the significance of prolonged parallel trading without evidence of actual confusion.

1. The two appeals were allowed and the refusals to register FIORELLI were set aside.

2. The appeal from a hearing officer is an appeal in the proper sense, not a rehearing. Applying Reef Trade Mark [2003] R.P.C. 5 and Bud and Budweiser Budbrau Trade Marks [2003] R.P.C. 25, the court should show real reluctance to interfere unless there is a distinct and material error of principle or the decision is clearly wrong. The fact that the appellate judge would have preferred a different conclusion is insufficient.

3. The hearing officer was plainly wrong to reason that similarity at the beginning of a word would be more likely to attract attention visually because the ends of words may become blurred in aural use. The observation in London Lubricants Ltd’s Application (1925) 42 RPC 264 required caution and could not sensibly be extended to visual perception. A word mark must be assessed visually as a whole.

4. The hearing officer also made a distinct and material error by refusing to take account of parallel trading. The relevant market was the market for designer clothes and accessories, rather than the separate classes in which registration was sought. The unchallenged evidence showed substantial simultaneous use of the two marks in that market for many years without evidence of actual confusion. That was a relevant factor in the global appreciation under section 5(2)(b), and in the circumstances it was decisive.

5. The remaining similarities were insufficient to establish a likelihood of confusion. The aural similarity was limited, the conceptual similarity arising from the marks’ Italian-sounding surnames had little significance in this market, and the visual similarity was not particularly substantial once the erroneous beginning-of-word reasoning was removed. Evidence from market participants was not admissible as expert opinion on the ultimate likelihood of confusion, but it was relevant insofar as it showed that none had encountered confusion in the market.

• High Court (Chancery Division): allowed the appeals and set aside the Registrar’s refusals.
• Registrar of Trade Marks: by written determinations dated 6 December 2002, upheld the oppositions under section 5(2)(b) of the Trade Marks Act 1994.