OAO "Alfa-Bank" v Alpha Bank AE

An appeal from a trade mark opposition decision is a review, not a rehearing. Intervention requires a distinct and material error of principle or a conclusion that was clearly wrong. Mere disagreement with the assessment of factors is insufficient.

For genuine-use purposes, the distinctive character of a registered mark must be assessed in the context of the mark as registered and the form in which it was used. A structured analysis is useful, but need not be applied mechanically. Service specifications must reflect the services genuinely used. Concurrent trading assists an applicant only where the parties have targeted an approximately similar or overlapping audience.

OAO "Alfa-Bank" appealed against a decision of Mr Mark Bryant, sitting as a Hearing Officer in the UK Intellectual Property Office. The opposition concerned an application for registration of a mark for financial services.

Alpha Bank AE relied on sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994. The Hearing Officer upheld the opposition under sections 5(2)(b) and 5(4)(a), but not section 5(3). The appeal concerned genuine use, the appropriate specification of services, likelihood of confusion and the significance of concurrent trading.

1. Standard of review. Mr Justice Briggs held that an appeal from the Trade Marks Registry is a review rather than a rehearing. The court should intervene only for a distinct and material error of principle or where the decision was clearly wrong. Mere surprise or preference for another conclusion is insufficient, particularly where the decision involved a multi-factorial global assessment. The approach in Reef Trade Mark [2003] RPC 101 was applied.
2. Distinctive character. The Hearing Officer had properly applied section 6A(4)(a) of the Trade Marks Act 1994. The three-stage analysis described in Re Nirvana Trade Mark (BLO/262/06) was an authoritative and useful explanation of the statutory test, but was not a code requiring slavish compliance. The additions “BANK LONDON” and “BANK AE” did not alter the distinctive character of “ALPHA”.
3. Specification. The evidence did not establish use of the mark for investment bank services. Issuing notes through investment-bank intermediaries did not itself show that the respondent provided investment-banking services. Evidence concerning brokerage, arranging investments, and investment information and advice justified including those narrower services in the specification.
4. Confusion and coexistence. The competing financial services were identical or sufficiently similar for section 5(2)(b). The Hearing Officer was entitled to find a likelihood of indirect confusion because consumers could regard retail banking and brokerage or investment-advice services as provided by the same or economically linked undertakings. Six years of coexistence was not probative of an absence of confusion because the parties targeted different, non-overlapping customer groups. An applicant could not rely on a restricted existing customer base to answer the statutory comparison.
5. The appeal therefore failed overall. The inclusion of investment bank services was set aside, but that limited success had no consequential effect on the outcome. The appeal was dismissed.

High Court (Chancery Division): appeal from the Hearing Officer’s decision dated 25 March 2011. The appeal was dismissed, subject to removing investment bank services from the respondent’s specification.