Rousselon Freres Et CIE v Horwood Homewares Ltd

For trade mark validity, the likelihood of confusion must be assessed globally, but the goods must first pass a threshold of similarity. A composite mark containing an earlier distinctive word may create a likelihood of confusion where that word retains an independent distinctive role, even if it is not the dominant element of the overall mark. The presence of additional words or devices does not necessarily avoid confusion. Evidence of parallel trading and an absence of actual confusion is relevant, but is not determinative. An appellate court may interfere with a hearing officer’s decision where a significant error of principle has affected the assessment.

The appellant applied to invalidate two United Kingdom trade marks, JUDGE SABATIER and STELLAR SABATIER, registered for goods in classes 8 and 21. It relied principally on its earlier registered word mark SABATIER and alleged a likelihood of confusion under sections 5(2)(b) and 47(2)(a) of the Trade Marks Act 1994.

The Registrar’s Hearing Officer dismissed the applications. The issues on appeal were whether the class 21 goods were similar to the appellant’s class 8 goods and whether the word SABATIER retained an independent distinctive role in the respondent’s composite marks.

1. The appeal succeeded in relation to the respondent’s class 8 goods, but failed in relation to its class 21 goods.

2. Similarity of goods is a threshold issue. The goods must be sufficiently similar before the global assessment of likelihood of confusion is undertaken. The relevant perspective is that of the average consumer. Evidence concerning trade classification may be relevant to that assessment, but it is not determinative. On the evidence, the Hearing Officer was entitled to find that the class 21 goods were not similar to the appellant’s class 8 goods.

3. The word SABATIER was distinctive for the relevant goods. The evidence did not establish that it had become generic or a common name in the trade. The statutory presumption of validity under section 72 of the Trade Marks Act 1994 had not been displaced.

4. Applying Medion v Thomson Multimedia [2006] ETMR 13, an earlier mark incorporated into a composite sign may retain an independent distinctive role even though another component dominates the overall impression. The Hearing Officer’s findings showed that SABATIER was a separate and distinctive element of the respondent’s marks and was not overwhelmed by JUDGE or STELLAR.

5. The relevant question remained whether the public was likely to believe that the goods originated from the same or economically linked undertakings. It was not necessary for SABATIER to be the dominant element. Given the identity or similarity of the class 8 goods and the independent distinctive role of SABATIER, the conclusion that there was no likelihood of confusion rested on a significant error of principle.

6. Parallel trading and the absence of evidence of actual confusion could be considered, but the evidence did not establish that SABATIER had lost distinctiveness or that there was no likelihood of confusion. The applications to invalidate the respondent’s marks therefore succeeded under section 47(2)(a) in respect of class 8 goods. The court declined to determine the separate case based on the composite marks LION SABATIER and PROFESSIONAL SABATIER.

• Registrar of Trade Marks: On 1 August 2007, the Hearing Officer dismissed the consolidated invalidity applications.
• High Court (Chancery Division): The appeal was allowed in respect of class 8 goods because the Hearing Officer had made a significant error of principle concerning the independent distinctive role of SABATIER. The decision was upheld in respect of class 21 goods.