Manpower Direct (UK) Ltd v Manpower Group Inc

For an opposition under section 5(3) of the Trade Marks Act 1994, the opponent must establish reputation, a link between the marks, and a relevant injury or serious likelihood of injury. Similarity between the services is relevant to the global assessment but is not essential. The comparison must cover the full range of services for which the later mark is applied, not merely services actually provided. Evidence concerning actual use may nevertheless support an inference of unfair advantage across the specification, with its weight assessed as a matter of degree. Where unfair advantage is established, a decision-maker need not separately analyse due cause if the findings naturally demonstrate its absence. An inherently descriptive mark may acquire a high degree of distinctiveness through extensive use.

Manpower Direct (UK) Ltd appealed from a Trade Mark Registry decision upholding Manpower Group Inc’s opposition under section 5(3) of the Trade Marks Act 1994. The opposition concerned applications containing the word MANPOWER for CCTV installation and security services. The Registry found that Manpower Group had a strong reputation in recruitment and staff provision, that the marks created a link, and that use of the later marks would give rise to unfair advantage. It also rejected arguments based on due cause and honest concurrent use.

The appeal alleged errors in the assessment of the services, distinctiveness, licensing and customer overlap, the failure to address due cause separately, and the assessment of honest concurrent use.

1. Appeal dismissed. The hearing officer had correctly identified the section 5(3) issues and had applied the relevant law. The use of a standard, accurate summary of the authorities by a specialist tribunal was not itself an error.

2. The comparison had to address the services covered by the applications. The hearing officer did so. Manned guarding involved the supply of security personnel and therefore bore some similarity to recruitment and staff-provision services. CCTV installation had no meaningful similarity to those services. The finding of a link was nevertheless open even on the appellant’s best case, because similarity of goods or services is a factor rather than a necessary requirement under section 5(3).

3. The link was to be assessed globally, having regard to all relevant factors, including mark similarity, the nature and closeness of the services, the strength and distinctiveness of the earlier mark, and the likelihood of confusion. The hearing officer was entitled to find that the common word MANPOWER dominated the later marks and that the earlier mark had acquired a high degree of distinctiveness through use, notwithstanding its inherent descriptiveness.

4. Evidence of actual confusion necessarily related to services actually provided. It could nevertheless support the finding of unfair advantage in relation to the wider specifications. Its relevance was a matter of degree, and the hearing officer had treated it as supportive rather than determinative.

5. There was no need for a separate due-cause analysis. Although absence of due cause is an element of section 5(3), a decision-maker need not always address it distinctly where it follows naturally from the findings, particularly where unfair advantage has been established.

6. The hearing officer was entitled to reject honest concurrent use. The evidence did not establish sufficient exposure of the average consumer to the competing marks to enable consumers to distinguish between them. The findings concerning the appellant’s use of MANPOWER alone and its failure sufficiently to assert an independent identity were also relevant to unfair advantage.

• High Court (Chancery Division): On appeal from the Trade Mark Registry, Birss J dismissed the appeal and upheld the opposition.