Extreme Networks Limited v Extreme E Limited

In an appeal from a Trade Marks Registry decision, similarity of goods or services is a multifactorial and evaluative question. Relevant factors include nature, purpose, method of use, users, trade channels, competition and complementarity. Some similarity requires an assessment of likelihood of confusion; low similarity is not dissimilarity. Ticket sales being incidental to an event organiser’s core business does not prevent the services from being complementary or similar. The term “shows” is not confined to theatrical performances and may include sporting spectacles, including motor races, for which seats are generally bookable. An appellate court may intervene only for an error of law or principle, or an identifiable flaw undermining the decision’s cogency.

Extreme E Limited applied to register a device mark for services including cultural, entertainment and sporting activities. Extreme Networks Limited opposed the application under section 5(2)(b) of the Trade Marks Act 1994, relying on an earlier mark for booking seats for shows.

The hearing officer upheld the opposition for some Class 41 services and all relevant Class 43 services: BL O/800/23. The High Court allowed the applicant’s appeal on ground 1 but dismissed grounds 2–6: [2024] EWHC 319 (Ch). The Opponent appealed, raising the proper approach to similarity of services and appellate review of compressed reasoning. The central issue was whether the hearing officer had made an error of principle in finding the services similar.

Lord Justice Arnold gave the leading judgment, with Lord Justice Baker and Lady Justice Asplin agreeing. The appeal was allowed and the hearing officer’s decision was reinstated.

1. The assessment of similarity of goods or services is a multifactorial evaluation. The tribunal must consider the relevant factors and weigh them as appropriate in the circumstances. It is not enough for an appellate tribunal to prefer a different evaluation. Intervention requires an error of law or principle, or an identifiable flaw such as a gap in logic, inconsistency or failure to consider a material factor undermining the conclusion. The approach in [2016] UKSC 12, [2019] UKSC 15 and [2024] UKSC 8 applied equally to similarity of goods or services.
2. The Applicant had conflated interpretation of the specifications with assessment of similarity. The service of booking seats for shows was properly understood as including a separate ticket-agency service. The question whether that service was similar to event organisation was distinct.
3. The distinction between core and incidental services may matter when considering identity, but has little relevance to similarity. An event organiser’s facility for booking tickets can be closely connected with organising the event. Complementarity may exist where one service is important or indispensable for the use of the other and consumers may believe that the same undertaking provides both.
4. Shows are not confined to theatrical performances. They may include displays, spectacles and entertainment of different kinds. Sporting events, including motor races, may therefore fall within the term. Seats are available and usually bookable for most sporting events. The hearing officer was entitled to find the cultural, entertainment and sporting services similar to booking seats for shows.
5. Although hearing officers often give highly compressed reasons, appellate courts must exercise caution and restraint. The absence of an express discussion of every point does not establish that it was ignored, and reasons need not set out every step in the evaluation.

• Court of Appeal (Civil Division) — Allowed the Opponent’s appeal and reinstated the hearing officer’s decision: [2024] EWCA Civ 1386.
• High Court (Chancery Division) — Allowed the Applicant’s appeal on ground 1 and dismissed grounds 2–6, with the result that the opposition failed for additional Class 41 services: [2024] EWHC 319 (Ch).
• Trade Marks Registry — The hearing officer upheld the opposition for some Class 41 services and all relevant Class 43 services: BL O/800/23.