Extreme E Limited v Extreme Networks Limited

On an appeal from a trade mark opposition decision, the appellate court must respect the Hearing Officer’s specialist judgment and intervene only for a material error of principle, inadequacy of reasoning, or an irrational conclusion.

Trade mark specifications should be confined to the substance or core of their possible meanings. The incidental sale or booking of seats for an organiser’s own events does not make event-organising services similar to the booking of seats for shows, particularly where no third-party ticketing service is involved. A sporting event is not necessarily a show merely because spectators may attend.

Indirect confusion requires a proper basis for concluding that consumers will attribute differences between marks to the same or a related undertaking. The recognised categories are guidance, not a statutory test.

Extreme E Limited appealed under section 76 of the Trade Marks Act 1994 against part of a Hearing Officer’s decision, decision number O/0800/23, upholding Extreme Networks Limited’s opposition under section 5(2)(b).

The opposition concerned class 41 and class 43 services. The Hearing Officer found certain services identical or similar, and concluded that the marks gave rise to direct and indirect confusion.

The appeal challenged the comparison of services, the visual and aural comparison of the marks, the assessment of inherent distinctiveness, and the findings on direct and indirect confusion. The central issues were whether the disputed services were similar to booking seats for shows and whether the Hearing Officer’s evaluative conclusions were open to her.

1. The appeal was allowed solely on ground 1. The activities covered by paragraphs 21, 22 and 43 of the Hearing Officer’s decision were not reasonably similar to the opponent’s service of booking seats for shows. The registration of the contested mark was therefore to include those activities.

2. Specifications for services should be scrutinised carefully and confined to the substance or core of their possible meanings. The relevant services concerned organising shows, events, exhibitions, sporting events, motor races, and ceremonies. Any booking of seats for the organiser’s own event was incidental. The services did not include booking seats for third-party events and did not compete with a ticket agency or equivalent service.

3. The mere fact that members of the public may book seats for a show does not create a material overlap with booking seats for shows. A sporting event may be watched by spectators, but that does not make it a show. The core of a sporting event is a game or activity involving physical exercise or skill, and sporting events do not necessarily involve bookable seating.

4. The challenges to the visual comparison, aural comparison and inherent distinctiveness of the earlier mark failed. Those matters involved evaluative judgments within the Hearing Officer’s permissible range.

5. The Hearing Officer’s conclusion on direct confusion was rational when read with her earlier findings. Direct confusion involves mistaking one mark for another. Indirect confusion involves a mental process in which the consumer attributes similarity between the marks and services to the same or a related undertaking. The categories identified in LA Sugar were helpful but non-exhaustive and were not to be applied as a statutory test. The conclusion on indirect confusion was not legally inadequate or unreasonable.

• Chancery Appeals, High Court: appeal from the Trade Marks Registry decision O/0800/23. The appeal was allowed solely on ground 1.
• Trade Marks Registry of the UK IPO: the opposition was upheld in part, with findings of similarity and direct and indirect confusion for services found to be identical or similar.