Envirotecnic v Gutterclear Uk Ltd

On an appeal from the Registrar of Trade Marks, an appellate court should interfere with a nuanced trade-mark assessment only for a distinct and material error of principle or where the decision is clearly wrong. In assessing likelihood of confusion, the marks must be considered normally and fairly, globally and through the eyes of the average consumer. Their visual, aural and conceptual similarities must be assessed alongside the goods or services, the distinctiveness of the earlier mark, purchasing conditions and imperfect recollection. Descriptive wording may create strong conceptual similarity, but distinctive colour and device elements may materially alter the overall visual impression. Bad faith under section 3(6) requires conduct having some material consequence; wrongdoing connected with an application but causing no material consequence is insufficient.

Envirotecnic appealed against the decision of Hearing Officer Ann Corbett, dated 16 April 2015, which dismissed its application under section 47 of the Trade Marks Act 1994 to invalidate Gutterclear UK Ltd’s registration. The registration covered cleaning services and cleaning-equipment rental services. The appellant relied on section 5(2)(b), based on its earlier Community trade mark for “Gutter-Clear”, and section 3(6), alleging bad faith in the application for registration.

The central questions were whether the Hearing Officer had materially erred in assessing notional and fair use, conceptual similarity and the global likelihood of confusion, and whether the alleged conduct constituted bad faith.

The appeal was dismissed.

1. Appellate approach. The court applied the approach in Digipos Store Solutions v Digi International [2008] EWHC 3371 (Ch). Surprise at, or disagreement with, a Hearing Officer’s conclusion is insufficient. Interference requires a distinct and material error of principle or a clearly wrong decision. Nuanced, multifactorial assessments attract particular caution on appeal.
2. Likelihood of confusion. The Hearing Officer had not erred in considering notional and fair use, including advertising use. However, she had erred in treating the conceptual differences between the marks as sufficiently significant. The descriptive words “Gutter” and “Clear” produced very strong conceptual similarity and scarcely any conceptual difference when the marks were considered essentially as word marks.
3. That error did not alter the result. The registered mark’s distinctive colour use was a dominant distinctive element and had to be included in the global assessment. The earlier mark was registered in monochrome, so normal and fair use did not require it to be compared as though it used the respondent’s colours. Taking the visual differences, the low similarity between the goods and services and the average degree of consumer care together, there was insufficient similarity to establish a likelihood of confusion.
4. Bad faith. The alleged loss of an opportunity to oppose before registration had no material value. If the opposition had failed, registration would have proceeded; if it had succeeded, the same attack could be made in invalidity proceedings. Section 3(6) concerns conduct having some material consequence, rather than wrongdoing at large connected with an application. The Hearing Officer’s conclusion that the respondent acted prudently to preserve its position was open to her and involved no appealable error.
5. There is no general duty on trade-mark applicants to notify competitors of their plans. The registration system and the Trade Marks Journal exist to inform the public, and interested persons should rely on their own resources to remain informed.

• High Court (Chancery Division): Appeal from the Registrar of Trade Marks dismissed the challenge to the registration.
• Registrar of Trade Marks: Hearing Officer Ann Corbett dismissed the section 47 invalidity application on 16 April 2015 (decision No O-180-15).