Revive A Phone Limited v WeFix

On an appeal from a trade mark registrar, the High Court reviews the decision and interferes only where it was wrong. Particular restraint is appropriate for evaluative, multi-factorial assessments such as mark similarity and likelihood of confusion.

The overall impression of competing marks must be assessed, including their distinctive and dominant components. A common element of low distinctiveness points against a likelihood of confusion, but does not prevent such a finding. It remains a relevant factor which may be decisive in an appropriate case. Indirect confusion may nevertheless arise where consumers perceive one mark as a variant or updated version of another.

Revive A Phone Limited appealed against a decision of the Registrar of Trade Marks, Decision No. O/655/21, which invalidated its WEFIX word mark and logo mark.

The invalidity applications relied on section 47(2)(a) of the Trade Marks Act 1994, with section 5(2)(b) relied on as the ground based on the respondent’s earlier WEFIX mark. The appellant accepted the findings on the goods and services, average consumer, purchasing act and distinctiveness of the earlier mark. It alleged errors in the treatment of the common element WE FIX and in the global assessment of likelihood of confusion.

1. Appeal dismissed. The court’s task was to review the Registrar’s decision and to allow the appeal only if the decision was wrong. There was no procedural irregularity. Where the court reviews an evaluative judgment based on a multi-factorial comparison, such as similarity of marks or likelihood of confusion, it should show significant respect to the Hearing Officer’s specialist experience and should be reluctant to interfere without a distinct error of principle (paras [18]–[22]).
2. The Hearing Officer was entitled to compare the marks before making a distinctiveness assessment and then bring the relevant matters together in the global assessment. Her finding that the earlier mark had a low degree of distinctiveness informed her conclusions about the common element WE FIX. That sequence involved no error of principle (paras [30]–[33]).
3. The principle identified in Whyte and Mackay and applied in Nicoventures was properly understood. Where the only similarity between marks is a common element of low distinctiveness, that circumstance points against likelihood of confusion. It does not exclude confusion as a matter of law. It is a relevant factor which may be decisive, but the assessment remains global and multifactorial (paras [34]–[42]).
4. For the word mark, the Hearing Officer was entitled to find direct and indirect confusion despite the low distinctiveness of WE FIX. For the logo mark, she was entitled to reject direct confusion but find indirect confusion because consumers might regard the contested mark as an updated version or variant of the earlier logo. The conclusions did not warrant appellate interference (paras [37]–[43]).

• High Court (Chancery Division): On 19 August 2022, the appeal from the Registrar of Trade Marks was dismissed.
• Registrar of Trade Marks: Decision No. O/655/21, dated 9 September 2021, invalidated the appellant’s word and logo marks under section 47(2)(a) of the Trade Marks Act 1994.