TIK TOK INTERNATIONAL LIMITED v TIKTOK INFORMATION TECHNOLOGIES UK LIMITED

On an appeal from the Registrar of Trade Marks, the court reviews the decision rather than conducting the evaluative exercise afresh. It should intervene only where an identifiable error of principle, such as a gap in logic, inconsistency or failure to consider a material factor, undermines the conclusion.

Goods and services may be similar even where they are not identical, and similarity may arise from overlap in nature, purpose or users. Complementarity is a distinct aspect of similarity and may exist where consumers could think that responsibility for related goods or services lies with the same undertaking. A highly distinctive identical mark can offset a low degree of similarity and support a finding of likelihood of confusion.

The appellant appealed against the Hearing Officer’s decision of 16 December 2021, which upheld the respondent’s application to invalidate the appellant’s UK trade mark registration for “compilation of information relating to information technology” in Class 42.

The respondent relied on an earlier identical mark registered for goods and services in Classes 9, 38 and 41. The Hearing Officer found the earlier mark highly distinctive, the relevant goods and services similar to at least a low degree, and a likelihood of direct confusion.

The appeal raised issues concerning the mark’s distinctiveness, similarity between the relevant goods and services, and likelihood of confusion.

1. Appeal dismissed. The court’s task was to review the Hearing Officer’s decision. It was not to carry out the evaluative assessment afresh. Intervention was justified only for an identifiable error of principle undermining the decision’s cogency, such as a gap in logic, inconsistency or failure to consider a material factor.

2. The court permitted the appellant to raise its challenge to the finding of distinctiveness, although the point had not been argued at first instance. The point required no new evidence, had been raised as a ground of appeal, and the respondent had adequate time to address it.

3. The finding that the earlier mark was inherently distinctive to a high degree was upheld. The mark’s deliberate misspelling made it an invented expression. Even if evocative of a metronome or clock, it was not descriptive of the particular goods and services relied upon. Distinctiveness was not determined by a broad assessment of the respondent’s business.

4. The Hearing Officer had not misdirected herself on similarity. Software capable of gathering and compiling information could be similar to compilation services. Goods could be similar to services. The Class 38 conclusion was more difficult, but the court was not sufficiently persuaded that it was wrong and, in any event, that finding was unnecessary to the result.

5. The Hearing Officer was entitled to find complementarity between electronic publication and compilation services. Publishing information would usually require gathering it, and information might be gathered for dissemination. The finding that consumers could regard the same undertaking as responsible for both services was therefore open to her.

6. Given the identity of the marks, the earlier mark’s high distinctiveness and the low degree of similarity found, the conclusion that there was a likelihood of confusion was not wrong and was the correct conclusion.

• High Court (Chancery Division): On appeal from the Registrar of Trade Marks, the court dismissed the appeal and upheld the decision of 16 December 2021, Decision No. O-917-21.