Hachette Filipacchi Presse SA v Saprotex International (Proprietary) Ltd

An appeal from a trade mark hearing officer is a review, not a rehearing. An appellate court should show real reluctance to interfere with a specialised tribunal’s multifactorial evaluation of the evidence, absent a distinct and material error of principle.

Under s.5(2) of the Trade Marks Act 1994, similarity of goods is a threshold issue. Without the required degree of similarity, likelihood of confusion does not arise. Under s.5(3), reputation and a sufficient link between the marks are not enough. The alleged association must be capable of producing unfair advantage or detriment, including by influencing economic behaviour to a material extent.

Hachette Filipacchi Presse SA, proprietor of ELLE trade marks for periodicals, women’s clothing and related services, opposed Saprotex International (Proprietary) Ltd’s application to register ELLE for knitting wool and yarn.

The hearing officer dismissed the opposition under ss.5(2) and 5(3) of the Trade Marks Act 1994. He found no sufficient similarity between the goods, and in any event no likelihood of confusion. He also found that any association between the marks was weak and would not produce unfair advantage.

Hachette appealed, alleging errors of principle in the assessment of association, unfair advantage, the treatment of fashion yarns and the s.5(2) threshold.

1. Appeal dismissed. The hearing officer’s decision was a reviewable decision under s.76 of the Trade Marks Act 1994, subject to CPR 52.11. The Chancellor applied the approach explained in REEF Trade Mark [2003] RPC 5: appellate intervention requires a distinct and material error of principle, particularly where the tribunal has conducted a multifactorial assessment and has specialist experience.
2. There was no structural error in the treatment of the s.5(3) opposition. The hearing officer’s findings about the reputation of ELLE, the possible association with knitting goods and the weakness of that association were properly carried into his assessment of unfair advantage. The evidence did not justify a stronger conclusion.
3. The references to fashion yarns did not establish a separate market or a different average consumer. The point had not been taken before the hearing officer, was unsupported by the evidence as a whole and could not be converted into an error of principle on appeal. It was also raised too late, consistently with Jones v MBNA International Bank 30 June 2000.
4. For s.5(2), similarity of goods is a threshold issue. As explained by reference to Intel Corporation v Sihra [2004] ETMR 4, both the threshold of similarity and likelihood of confusion had to be satisfied. The hearing officer was entitled to find insufficient similarity and, alternatively, no likelihood of confusion.
5. The hearing officer was also entitled to distinguish Mango Sport System SRL v Diknah SL [2005] ETMR 5. The goods were not complementary, the similarity was at most low, and the evidence did not show that any association would materially affect consumers’ economic behaviour. The court therefore dismissed the appeal under both ss.5(2) and 5(3).
6. The Chancellor additionally disallowed, as between solicitor and client, £2,300 of Hachette’s copying costs for unnecessary appeal bundles under PD 52 para 5.6.

• High Court (Chancery Division): the appeal from the hearing officer’s decision dated 8 June 2006 was dismissed. The court also disallowed £2,300 of copying costs as between solicitor and client.