Asia Standard Management Services Ltd v Standard International Management LLC

In assessing likelihood of confusion under Trade Marks Act 1994, goods and services should generally be considered individually, or in genuinely homogeneous groups. The relevant average consumer and the presentation of the goods or services may differ between categories. However, a broadbrush assessment may be permissible where an earlier decision has established the relevant similarity findings and the marks are materially alike, provided the decision-maker identifies a sufficiently strong or worst-case example from which the outcome can safely be extrapolated. An appellate court should not interfere with a hearing officer’s decision absent a distinct and material error of principle or clear error.

Asia Standard applied to register a series of marks for goods and services in Classes 16, 35, 36, 39, 41 and 43. Standard International opposed the application under section 5(2)(b) of the Trade Marks Act 1994, alleging similarity, identity and a likelihood of confusion with earlier marks.

The Trade Marks Registry, in Decision O-125-19, upheld the opposition. The Hearing Officer assessed likelihood of confusion principally by reference to providing casino facilities, treating that as the strongest case for Asia Standard and extrapolating the conclusion to the remaining goods and services. The appeal concerned whether that approach was impermissibly insufficiently granular.

1. Appeal dismissed. The Hearing Officer’s decision was upheld.
2. Section 5(2)(b) of the Trade Marks Act 1994 requires consideration of both the degree of similarity between the goods or services and the existence of a likelihood of confusion. The assessment should generally proceed on a good-by-good or service-by-service basis. Goods or services may be grouped where they are sufficiently homogeneous to be assessed in essentially the same way and for essentially the same reasons. This approach was reflected in Separode, O-399-10.
3. The Hearing Officer had not conducted that granular assessment. In an abstract case, the reasoning would be difficult to defend because a finding concerning casino facilities did not obviously determine the position for all other goods and services.
4. Nevertheless, the approach was permissible on the particular facts. The Earlier Decision had established the relevant similarity findings, the Marks were very similar to the Earlier Mark, and the Hearing Officer selected a service involving a high degree of consumer attention and only moderate similarity. Having found a likelihood of confusion in that paradigm case, he was entitled to conclude that the remaining categories presented no weaker case.
5. The appellate court’s task was limited. Under Virgin Enterprises v Virginic LLC [2019] EWHC 672 (Ch), it should not interfere unless the decision contained a distinct and material error of principle or was clearly wrong. Reading the Decision as a whole, the reasons were sufficiently apparent and no such error was established.

• Trade Marks Registry: Mr George Salthouse upheld Standard International’s opposition in Decision O-125-19.
• High Court (Chancery Division): The appeal was dismissed.