Nicoventures Holdings Ltd v The London Vape Company Ltd

In assessing likelihood of confusion, the court must consider not only the distinctiveness of the earlier mark as a whole, but also the distinctiveness of the elements shared by the competing marks. Where the only similarity lies in common elements that are descriptive and non-distinctive, that factor weighs against a likelihood of confusion, although it does not make confusion impossible. The assessment remains multifactorial and must consider the distinctiveness and visual impact of the non-common elements, the overall impression, and the circumstances of consumer choice. A decision which identifies the common elements as non-distinctive but fails to assess their significance when determining likelihood of confusion contains an error of law.

Nicoventures Holdings Ltd appealed against a decision of CJ Bowen for the Registrar of Trade Marks dated 13 July 2017. The Hearing Officer had upheld The London Vape Company Ltd’s opposition to registration of Nicoventures’ mark under section 5(2)(b) of the Trade Marks Act 1994.

The marks shared the elements VAPE and CO. The Hearing Officer found the goods identical or similar, the marks visually, aurally and conceptually similar, and the shared elements descriptive and non-distinctive, but nevertheless concluded that there was a likelihood of direct or indirect confusion. The central issue was whether that conclusion involved an error of law.

1. Appeal allowed. The opposition under section 5(2)(b) of the Trade Marks Act 1994 was dismissed.

2. Per Birss J, the assessment of likelihood of confusion is multifactorial. It is insufficient to consider only the level of distinctive character possessed by the earlier mark. The court must ask what gives the earlier mark its distinctive character, as explained in Kurt Geiger v A-List BL O-075-13.

3. The principle stated by Arnold J in Whyte and Mackay v Origin [2015] EWHC 1271 (Ch) was accepted and applied. Where the only similarity between competing marks arises from a common element with low distinctiveness, that circumstance weighs against a likelihood of confusion. It remains a relevant factor rather than an absolute bar.

4. The Hearing Officer had correctly found that VAPE and CO were descriptive and non-distinctive, both individually and in combination. However, he failed to consider their low distinctiveness when assessing the likelihood of confusion. His reference to the very low distinctiveness of the earlier mark as a whole did not address the distinctiveness of the common elements.

5. The shared conceptual and aural similarities arose entirely from non-distinctive elements. The stylised features of the marks were different, and their differences therefore assumed greater significance for the average consumer, despite imperfect recollection. There was no likelihood of confusion.

1. High Court (Chancery Division): Appeal from the Registrar of Trade Marks allowed. The opposition under section 5(2)(b) of the Trade Marks Act 1994 was dismissed.
2. Trade Marks Registry: On 13 July 2017, CJ Bowen upheld the opposition to registration of the appellant’s mark.