Shine TV Limited v SKA Trading Ltd

When assessing conceptual similarity between trade marks, the court must consider the perception of the relevant average consumers. It must identify any likely meanings of each mark, including different meanings perceived by different classes of consumer, rather than select a meaning favourable to one party. The common meaning should be considered, but other likely concepts should not be ignored. The marks must nevertheless be assessed as wholes, and a conceptual message is relevant only where it has a clear and specific meaning capable of immediate grasp. On a statutory appeal, the court reviews rather than rehears the decision and should interfere only for an error of law or a conclusion outside the bounds of reasonable disagreement. An experienced specialist tribunal is entitled to respect, and an appellate court should not infer an omitted analytical step without a proper basis.

Shine opposed SKA’s application to register the word mark MISTER CHEF for cookware and bakeware. The opposition relied on sections 5(2)(b) and 5(3) of the Trade Marks Act 1994, relying on earlier MASTERCHEF/MASTER CHEF marks.

The Hearing Officer found the goods identical or overlapping and the marks visually and aurally similar to quite a high degree, but conceptually dissimilar. He concluded that there was no likelihood of confusion and no relevant mental link for section 5(3). Shine appealed, contending that the Hearing Officer had considered only one meaning of MASTER and had wrongly assumed that MASTER CHEF meant a top chef. The central issue was whether those conclusions disclosed a material error of principle.

1. Appeal dismissed. The Hearing Officer’s decision was not shown to contain an error of law or a conclusion outside the bounds within which reasonable disagreement was possible.
2. Conceptual similarity is assessed from the standpoint of the average consumer. The average consumer is a notional person, not a statistical average. The court must consider any relevant class of consumer and must not average consumers with different levels of expertise or different likely perceptions.
3. Where a mark may convey more than one meaning, the court should identify all likely concepts and consider whether a particular meaning would be understood by a significant proportion of average consumers. The mark must still be considered as a whole, and its separate elements must not be artificially dissected.
4. The Hearing Officer had accurately stated the applicable principles, identified the relevant consumer categories and referred to the third dictionary meaning of MASTER. It was open to him to conclude that consumers purchasing the relevant goods would understand MASTER CHEF as referring to a highly skilled chef, rather than to a boy’s title corresponding to Master James. The absence of an express discussion of every possible meaning did not justify an inference that the analysis had not been undertaken.
5. The Hearing Officer was also entitled to find that MASTERCHEF designated a top chef when assessing inherent distinctiveness in the context of cooking goods. There was no proper basis for inferring that he had imported the television programme’s reputation into his conceptual comparison.
6. The section 5(3) conclusion followed from the finding that there was no likelihood of confusion or mental link. The appeal therefore failed on both grounds.

High Court (Intellectual Property List): statutory appeal under section 76 of the Trade Marks Act 1994 from the Hearing Officer’s decision for the Registrar of Trade Marks. The appeal was dismissed.