Aveda Corporation v Dabur India Ltd

In assessing likelihood of confusion between trade marks, each sign must generally be considered as a whole. However, a component of a composite sign may retain an independent distinctive role even if it is not dominant. That role may create a likelihood of confusion where consumers attribute the goods to the proprietor of the earlier mark or to an economically linked undertaking. The principle can apply where the component is similar to, rather than identical with, the earlier mark. An independent distinctive role does not itself establish confusion; the ultimate question remains whether confusion is likely. Similarity between goods must be assessed by reference to their uses, users, physical nature, trade channels, competition and complementarity, with the relevant factors considered together.

Dabur applied to register DABUR UVEDA for goods in Classes 3 and 5. Aveda opposed the application under section 5(2)(b) of the Trade Marks Act 1994, relying on earlier AVEDA registrations. The hearing officer dismissed the opposition, finding that the composite mark was not confusingly similar to AVEDA and that certain goods were not similar.

Aveda appealed on grounds concerning the application of Medion, late evidence, the interdependency principle, the average consumer and the similarity of goods. The central issues were whether UVEDA had an independent distinctive role in DABUR UVEDA, and whether the goods covered by the application were identical or similar to goods for which Aveda had established use.

1. Appeal and appellate approach. The appeal was allowed except in relation to Class 3 cleaning, polishing, scouring and abrasive preparations. An appellate court should show real reluctance to interfere with a specialist decision absent a distinct and material error of principle, applying REEF Trade Mark [2002] EWCA Civ 763, [2003] RPC 5. The hearing officer had made such errors on the principal issue and in parts of his goods-similarity analysis.
2. Composite marks. The ordinary rule is to compare marks as wholes. But, following and applying Medion AG v Thomson Multimedia Sales Germany & Austria GmbH Case C-120/04, [2005] ECR I-8551, a component may have an independent distinctive role without being the dominant element. The hearing officer wrongly treated equal prominence of DABUR and UVEDA, and the overall impression of the composite mark, as sufficient to exclude confusion. He should have asked whether the average consumer would perceive UVEDA as significant independently of DABUR UVEDA and, if so, whether that would lead to confusion.
3. The principle is capable of applying where the later component is similar to, rather than identical with, the earlier mark. The court followed the approach of the General Court in Société des Produits Nestlé v OHIM Joined Cases T-5/08 to T-7/08, [2010] ECR II-1177, and Bimbo SA v OHIM Case T-569/10, [2012] ECR II-0000, [2013] ETMR 7. The ultimate test remained likelihood of confusion; an independent distinctive role did not automatically establish it.
4. Applying those principles, consumers familiar with AVEDA beauty products would be likely to perceive UVEDA as AVEDA, or to misread or mishear it as AVEDA. They could therefore believe that DABUR UVEDA indicated an economic connection with Aveda. Confusion was established for identical goods and, applying the interdependency principle, for the goods found to be similar.
5. Goods specifications and similarity. Specifications must receive their natural and usual meaning and must not be given either an excessively broad or artificially narrow construction, applying Omega Engineering Inc v Omega SA [2012] EWHC 3440 (Ch). For partial revocation, the tribunal must identify fair, clear and precise categories realistically exemplified by the proven use, applying Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch).
6. The unqualified expression cleaning, polishing, scouring and abrasive preparations was understood as household or industrial preparations. Aveda’s exfoliants, body polishers and dermabrasives were instead examples of skin-care or body-cleansing products. Those goods were not similar because their uses, physical nature and trade channels differed, and they were neither competitive nor complementary. Dentifrices were reasonably similar to the relevant skin-care and body-cleansing products. Fungicides were also similar because medicated skin creams may treat fungal infections.
7. Dabur’s mark could proceed only for the goods listed in the final order, which excluded the goods for which a likelihood of confusion had been found.

High Court (Chancery Division). The appeal from the hearing officer’s decision dated 22 August 2012 (O/318/12) succeeded except in relation to Class 3 cleaning, polishing, scouring and abrasive preparations.