Deutsche Telekom Ag v E! Entertainment Television Inc

An appeal from a trade mark opposition hearing proceeds by way of review, not rehearing. The appellate court should respect the specialist decision-maker and intervene only for an error of law or principle, an irrational conclusion, or inadequate reasons. A reputation may arise from use outside the United Kingdom, but the evidence must show that a significant number of persons in the United Kingdom were likely to know of the mark. General evidence about the proprietor’s business does not establish reputation in a particular mark. Trade marks must be assessed globally and as wholes, although their dominant and distinctive components may be identified. The appeal was dismissed because the Hearing Officer applied the correct principles and reached a conclusion reasonably open to him.

Deutsche Telekom AG appealed against the Hearing Officer’s decision rejecting its opposition to registration of E! ONLINE by E! Entertainment Television Inc. The opposition relied principally on sections 5(2)(b) and 5(3), based on earlier T-ONLINE marks. The Appellant challenged the Hearing Officer’s approach to reputation, similarity and the comparison of the marks, but did not challenge his factual findings. The central issues were whether the decision involved an error of law or principle, whether the evidence established a relevant reputation, and whether the marks created a likelihood of confusion.

1. The appeal was dismissed. The appeal from the Registry proceeded by way of review rather than rehearing. Applying REEF trademark [2003] RPC 101, the court would intervene only for an error of principle, an irrational conclusion, or insufficient reasons. A decision should not be treated as erroneous merely because it could have been expressed more fully.

2. The Hearing Officer had not treated use within the United Kingdom as an absolute prerequisite to reputation. Reputation could be established through use abroad if the evidence showed that a significant number of persons in the United Kingdom were likely to know of the use of the mark. The Appellant’s evidence concerned the business of Deutsche Telekom generally and gave no sufficiently direct evidence of knowledge in the United Kingdom of the particular T-Online service. The service was available only in German, and the evidence did not identify United Kingdom subscribers or comparable evidence of relevant public awareness.

3. The Hearing Officer was entitled to give minimal weight to the Appellant’s general reputation and to conclude that the marks were dissimilar when assessed globally. Identifying dominant and distinctive components did not amount to impermissible dissection. The marks had to be considered as wholes, while recognising that the common word “online” had little distinctive character in the context of the goods and services.

4. The Hearing Officer had correctly stated and applied the relevant likelihood-of-confusion principles. The section 5(2)(b) challenge therefore failed. The section 5(3) challenge also failed because the absence of a relevant distinctive character or reputation left no basis for the opposition.

The judgment describes an appeal from the Hearing Officer’s decision dated 16 June 2005, which rejected the opposition to registration of E! ONLINE. The High Court dismissed the appeal and upheld the Hearing Officer’s reasoning.