Lonsdale Sports Ltd v Erol

On an appeal from a trade mark opposition decision, the court must review the decision for a material error of principle or a conclusion that is clearly wrong. A hearing officer may select the strongest earlier marks for comparison, but must give the parties an opportunity to address the proposed selection and must provide reasons. A family of marks is not entitled to enhanced protection as such, but its existence is relevant to the reputation and distinctive character of the earlier marks. Use of a registered mark as part of a composite mark may constitute genuine use if consumers perceive it as indicating origin. For section 5(3), a global link between the marks, together with an inference of advantage or dilution from the later mark, may establish the opposition even where the later mark has not yet been used.

Lonsdale opposed registration of Erol’s sportswear mark under sections 5(2)(b) and 5(3) of the TMA 1994. The Hearing Officer rejected both grounds. She selected two of Lonsdale’s earlier marks, excluded a third mark, rejected reliance on an elongated-L mark because it had not been used independently, and found no likelihood of confusion, unfair advantage or detriment.

Lonsdale appealed, alleging errors in the selection and treatment of the earlier marks, the assessment of a family of marks, the genuine-use requirement, the comparison of the marks, and the section 5(3) analysis. The central issues were whether the Hearing Officer’s errors affected the section 5(2)(b) conclusion and whether the evidence established the section 5(3) opposition.

1. Appeal allowed. The appeal was a review, not a rehearing. The question was whether the Hearing Officer had made a distinct and material error of principle or reached a clearly wrong conclusion.
2. The Hearing Officer erred by excluding mark “935” without first allowing Lonsdale to address the proposed selection and without giving adequate reasons. Mark “935” was a proper “best case” because it included the word “London”, the dominant feature of Erol’s mark. That error did not affect the section 5(2)(b) result. The purchasing process was principally visual, and consumers viewing the marks as wholes would not be confused as to origin.
3. There is no enhanced protection for a family of marks as such. Each mark must still be assessed individually. However, the existence of a family is a relevant factor in assessing the reputation and distinctive character of the earlier marks. The Hearing Officer had sufficiently taken that feature into account.
4. The Hearing Officer erred in law by treating use “as and of itself” as necessary for mark “554”. Under Nestlé v Mars and Colloseum Holding AG, use as part of a composite mark or in conjunction with another mark can constitute genuine use, provided the relevant consumers perceive the component as indicating origin. The evidence nevertheless did not show that mark “554” added distinctiveness beyond marks “127” and “935”, so the error did not alter the section 5(2)(b) outcome.
5. The word “London” could be dominant although not technically distinctive. The mark had to be assessed as a whole, including distinctive but non-dominant elements such as the “NaS” and tick or swoosh devices.
6. For section 5(3), the existence of a link was to be assessed globally. The identical goods, closely corresponding public, Lonsdale’s long-established reputation, and the shared elongated-L and cinemascope features established the necessary link. The absence of prior use of Erol’s mark did not prevent reasonable inferences about foreseeable advantage or detriment. The adoption of the distinctive presentation created an association with Lonsdale’s reputation and diluted its brand.
7. The section 5(3) opposition was therefore made out, and Erol’s mark ought not to have been registered.

1. High Court (Patents Court): allowed Lonsdale’s appeal from the Hearing Officer’s decision dated 27 February 2013.
2. Registrar of Trade Marks: rejected Lonsdale’s opposition under sections 5(2)(b) and 5(3) of the TMA 1994.