The Wella Corporation v Alberto-Culver Company

On an appeal from a trade mark decision, a tribunal may find that an earlier registered mark had no distinctive character at the legally relevant date. That finding does not invalidate the registration, because distinctiveness may be acquired later through use. The presumption of validity does not prevent an assessment of the mark’s distinctiveness.

Where neither the earlier mark nor the later composite mark would be perceived as indicating trade origin, visual, phonetic and conceptual similarity between them does not create a likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994. The relevant confusion is confusion as to trade origin.

Wella appealed against the decision of Mr David Landau, sitting for the Registrar of Trade Marks, concerning Alberto-Culver’s registration of FUNKY SHAPER for hair care products and preparations. Wella relied on its earlier mark SHAPER and alleged invalidity under sections 47(2)(a), 5(2)(b) and 5(3) of the Trade Marks Act 1994.

The hearing officer accepted that the goods were identical and that the marks had visual, phonetic and conceptual similarities. He nevertheless rejected the application under section 5(2)(b), finding that SHAPER lacked distinctive character at the relevant date and that FUNKY added nothing distinctive. The central issue on appeal was whether those conclusions were legally open and supported by the evidence.

1. The appeal was dismissed. The appeal was a review of the hearing officer’s decision. The appellant faced the usual high hurdle in challenging factual conclusions for which there was evidence.
2. The hearing officer had correctly focused on the date of Alberto-Culver’s application in 2009. His finding that Wella’s mark SHAPER lacked all distinctive character at that date was not a finding that the registered mark was invalid. The mark could acquire distinctiveness through subsequent use. A tribunal determining the section 5(2)(b) issue was entitled in principle to make a finding at the extreme end of the distinctiveness spectrum: [2011] EWHC 3558 (Ch) at paras 18–24.
3. The evidence, including unchallenged evidence that the word was used descriptively by other traders, supported the hearing officer’s factual conclusion. The conclusion was reached having regard to the statutory presumption of validity under section 72 of the Trade Marks Act 1994, and could not be faulted: [2011] EWHC 3558 (Ch) at paras 25–30.
4. The hearing officer’s reasoning on the composite mark was logically correct. If SHAPER had no distinctive character and FUNKY added nothing distinctive, neither mark would be perceived by the average consumer as an indication of origin. Although the goods were identical and the marks were similar, the consumer would not believe that the goods came from the same undertaking or economically linked undertakings. Applying the principle in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc Case C-39/97, there was no likelihood of confusion: [2011] EWHC 3558 (Ch) at paras 31–33.
5. The third ground added nothing separate. The hearing officer had evidence on which he could reach the necessary factual conclusions. The appeal was dismissed on all grounds. The respondent’s notice was not heard because it was unnecessary to the result: [2011] EWHC 3558 (Ch) at paras 17, 33–34.

• High Court (Chancery Division): Mr David Landau, sitting for the Registrar of Trade Marks, dismissed Wella’s invalidity application in decision O-229-11 dated 30 June 2011.
• High Court (Chancery Division): The appeal was dismissed by His Honour Judge Birss QC on 1 December 2011.