What has happened?
- Motus Group filed UK trade mark applications for 'Motus Group', 'Motus Group UK Ltd' and 'Motus Group (UK) Ltd', all covering commercial vehicles in class 12 and related services in classes 35, 36, 37 and 41.
- Lotus, the famous British car manufacturer, opposed the applications relying on four earlier UK trade mark registrations for 'LOTUS' covering goods and services identical and similar to those for which the Motus applications were filed. It opposed based on a likelihood of confusion and unfair advantage/detriment to reputation.
- The hearing officer dismissed the oppositions in their entirety because the marks were not sufficiently similar for a likelihood of confusion (direct or indirect) or a mental link for the reputation-based claim to arise. The fact that the beginnings of the marks are different and the lack of any conceptual similarity between the marks were decisive factors.
- Lotus appealed the decision. The Appointed Person upheld the decision in its entirety, meaning the oppositions have failed. There is no further right of appeal.
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The case is yet another which highlights how difficult it is to overturn first instance decisions (whether Registry or court) in the UK. Getting evidence and arguments right first time around in the UK is absolutely key. The case (at least as interpreted by the Appointed Person) also highlights that conceptual differences between marks can sometimes be sufficient to distinguish them even in the UK (on that, see also our "ELTON" v "ELON" article). It also contains a useful discussion on post-sale confusion.
Want to know more?
Elements with no trade mark significance
The Appointed Person clarified that it is acceptable for words identifying a corporate structure (eg 'Group' and 'Ltd') to be treated as lacking distinctive character. However, this does not mean that these words can automatically be disregarded when comparing a mark and sign. Only elements that are negligible can be ignored in that comparison. An element lacking distinctiveness (or trade mark significance) is not automatically negligible. It is for the Hearing Officer to determine whether an element lacks trade mark significance and is also negligible.
The different first letter
It is a well-established trade mark principle that consumers pay more attention to the beginning of signs. Therefore, differences at the beginning can sometimes be sufficient to avoid a conflict. Whilst the Appointed Person agreed with Lotus that this cannot negate the need for a global comparison of the marks, he also emphasised that the Hearing Officer had in fact undertaken such a comparison and considered all the elements of the marks. What Lotus was effectively challenging was the weight given to each different element in the global comparison by the Hearing Officer. The Appointed Person clarified that this sort of value judgment is not open to challenge on appeal. It is for the Hearing Officer to weigh up the different factors in the global appreciation test.
Imperfect recollection
Lotus argued that the Hearing Officer erred in her assessment of the likelihood of confusion, in particular regarding her approach to imperfect recollection. Lotus suggested that she mixed up the timing as the imperfect recollection of the marks in the mind of the relevant public ought to have been the starting point – not that consumers had perfect recollection because there was no 'conceptual hook' to make imperfect recollection likely. In other words, the comparison of the marks is undertaken from the imperfect recollection of the earlier mark in the mind of the relevant consumers.
The Appointed Person agreed with Lotus that the reference to imperfect recollection in the Hearing Officer's decision was not helpful. However, he noted that, taking into account the context, it was clear that what the Hearing Officer meant to say was that the conceptual differences between the marks were such that 'LOTUS' was simply not brought to mind when the relevant public encountered 'MOTUS'. The Appointed Person emphasised that that this was a correct finding as it is a well-established principle that the absence of conceptual similarity can counterbalance visual and/or aural similarities.
There is very little further consideration of this point, but it does seem that the conceptual differences between the marks had a fairly significant impact on the first instance and appeal decisions in this case. We are watching for further UK cases on this (given the recent trend, at least at the EUIPO, for conceptual differences between marks to be given additional weight).
Commercial vehicles and high-performance motor cars
The Appointed Person clarified that, whilst the specification should not be construed in light of legislative definitions of relevant terms, it would be difficult to find the hearing officer's interpretation (that commercial vehicles and high-performance motor cars are not identical) rationally unsupportable if it aligns with the definition found in legislation.
Indirect confusion
The Appointed Person did not accept the that it was logical for 'MOTUS' to be a brand extension of 'LOTUS' such that there was indirect confusion. The Appointed Person stated that there was no basis put forward by Lotus as to why the change of the first letter was a consistent brand extension. The Appointed Person also noted that in the cases cited by Lotus (ie BRAT FACE/FAT FACE and AMERICAN EAGLE/EAGLE RARE) there was a clear conceptual similarity between the marks. In the case at issue, the hearing officer found that there was no conceptual similarity so the Appointed Person noted that it is difficult to see why the change of the first letter would be perceived as a brand extension.
Post-sale confusion
The Appointed Person stated that post-sale confusion is only relevant where the information given to the member of the relevant public (in a post-sale context) is different from that given to the original purchaser. This may be because the third party, who might purchase the product in future, has more information, less information of even inaccurate information. The fact that the relevant public may have a low degree of attention or see the mark only fleetingly is not enough. What matters in post-sale confusion is the reliance on different information.
In the present case, the Appointed Person noted that the relevant public, when seeing a trade mark on a passing or parked car, is seeing the same information they would see if they encountered the car and trade mark in a sales environment. The analysis in the post-sale context is no different from the point of sale context. This is consistent with the recent Thom Browne ruling.
Fleeting links
Lotus also challenged the hearing officer's finding that, if a mental link did arise, it would be a fleeting one which would not give rise to any of the possible heads of damage (ie unfair advantage or detriment).
The Appointed Person clarified that, when a link is found, it is necessary to consider whether one of the injuries exists. However it is possible for a first instance tribunal to address this point very briefly by saying that any link would be dismissed as a coincidence or by describing the link as a fleeting one.
