Tripadvisor LLC v Handsam Ltd

An appeal from a trade mark opposition decision is ordinarily a review, not a rehearing. The appellant must show a distinct and material error of principle or that the decision was clearly wrong. This applies particularly to multi-factorial assessments under Trade Marks Act 1994, section 5(2) and section 5(3). A hearing officer may assess different groups of goods or services separately where confusion or a link may arise for some but not others. The officer need not repeat every relevant factor at each stage if the decision, read as a whole, shows that the factors were considered. The existence of a link under section 5(3) is assessed globally, but the nature and similarity of the goods or services remain relevant factors.

TripAdvisor appealed against the decision of the Trade Mark Registry hearing officer concerning Handsam’s application to register the logo mark handsam Schooltripsadvisor. The hearing officer allowed registration for specified goods and services, finding no likelihood of confusion under section 5(2) of the Trade Marks Act 1994, and no requisite link or damage under section 5(3). The opposition succeeded for other goods and services.

TripAdvisor alleged errors of principle, including failure to conduct the required global assessments, misuse of the concepts of direct and indirect confusion, and an incorrect assessment of the link required under section 5(3). The central issue was whether the hearing officer’s evaluative conclusions were legally flawed or clearly wrong.

1. Appeal dismissed. The hearing officer had applied the correct legal principles, and TripAdvisor had not shown a distinct and material error of principle or that the decision was clearly wrong.
2. On section 5(2)(b) of the Trade Marks Act 1994, the hearing officer was entitled to consider a particular group of goods or services first and to undertake separate global assessments for different groups. The fact that relevant factors were not repeated at every stage did not show that they had been ignored. The decision had to be read as a whole.
3. The hearing officer was entitled to consider indirect confusion after rejecting direct confusion. The distinction between direct and indirect confusion did not improperly displace the required assessment of similarity and the overall circumstances.
4. The hearing officer had considered the distinctiveness, reputation, colour, font, similarity and complementarity issues relied upon by TripAdvisor. The appeal sought to reargue the evaluative weight given to those matters, which was not a proper basis for appellate interference.
5. For section 5(3), the necessary link had to be assessed globally. The relevant factors included the similarity of the marks and the nature, closeness or dissimilarity of the goods or services and the relevant section of the public. It was permissible to consider goods and services separately because a link might arise for some but not others.
6. The hearing officer’s conclusion that no link existed for the allowed goods and services was not vitiated by error. Independently, his alternative conclusion that the use would not take unfair advantage of, or cause detriment to, the distinctive character or repute of the earlier marks was sufficient to defeat the section 5(3) opposition.

• High Court (Chancery Division): TripAdvisor’s appeal from the Trade Mark Registry decision dated 15 December 2015 was dismissed.