Soulcycle Inc v Matalan Ltd

An appellate court reviewing a trade mark opposition should interfere with a Hearing Officer’s decision only for a distinct and material error of principle. The assessment of likelihood of confusion is not subject to a single-meaning rule. Different perceptions may exist within the relevant class of average consumer, and proportions of that class may be considered where appropriate. This applies both to validity and infringement proceedings, and may inform the assessment of conceptual similarity as well as the ultimate likelihood of confusion. Composite marks must nevertheless be assessed as wholes, while considering whether an element has an independent distinctive role. An appellate court must respect evaluative conclusions that fall within the range reasonably open to the Hearing Officer.

SoulCycle opposed Matalan’s application to register a composite mark including the word “SOUL”, relying on section 5(2)(b) of the Trade Marks Act 1994. The Registrar’s Hearing Officer dismissed the opposition in Decision No O-445-16 dated 22 September 2016. SoulCycle appealed, alleging errors in the treatment of the average consumer, the visual, aural and conceptual similarities between the marks, and the assessment of indirect confusion. The central issue was whether the Hearing Officer had made a distinct and material error of principle warranting appellate interference.

1. The appeal was dismissed. The appeal was not a complete rehearing. The court could interfere only where the Hearing Officer had made a distinct and material error of principle. The duty to give reasons did not require every factor to be individually listed, provided the critical issues and the manner of resolving them were clear.

2. The Hearing Officer was entitled to consider different perceptions within the relevant class of average consumer. The law did not require the court to identify one single meaning of the applied-for mark. The approach was consistent with Hearst Holdings Inc v AVELA Inc [2014] EWHC 439 (Ch), Schutz (UK) Ltd v Delta Containers Ltd [2011] EWHC 1712 (Ch) and Interflora Inc v Marks and Spencer plc [2013] EWHC 1291 (Ch), and was equally applicable in validity proceedings.

3. It was legitimate to apply that approach when assessing conceptual similarity. Conceptual similarity was directly relevant to the ultimate question of confusion. The Hearing Officer had not impermissibly conflated consumers who perceived “SOUL” within the longer mark with consumers who perceived only an invented word.

4. The Hearing Officer was entitled to assess visual similarity without dividing consumers into the same perception-based groups. Pure visual comparison concerned the letter-shapes as presented. He was also entitled to find only a medium degree of aural similarity after considering the possible pronunciations.

5. The Hearing Officer properly considered the composite mark as a whole and addressed whether “SOUL” had an independent distinctive role. His conclusion that it did not, and that the common element was not highly distinctive, was evaluative and fell within the range of conclusions open to him. The court would not substitute its own assessment.

• High Court (Chancery Division): SoulCycle appealed against the Registrar’s Hearing Officer’s Decision No O-445-16, dated 22 September 2016. The appeal was dismissed.