Gutterclear - a clear case of trade mark validity?

What does the High Court’s ruling in Envirotecnic Ltd v Gutterclear UK Ltd tell us about challenging trade mark validity?

Envirotectnic Ltd (the appellant) owns a Community Trade Mark (CTM) for the mark ‘Gutter-Clear’ (word) registered in class 19 in respect of ‘Non-metal rain gutter filters in the nature of foam inserts for maintaining gutters and downspouts’). The CTM was registered as of 6 August 2009.

Gutterclear UK Ltd (the respondent) owns a UK trade mark for a logo mark including the word ‘Gutterclear’ in a coloured and stylised form alongside the image of a leaf registered (for an image click here) in class 37 in respect of ‘Commercial, industrial & residential cleaning services. Cleaning equipment rental services’ (the UK trade mark). The UK trade mark was registered on 13 March 2013.

The appellant appealed a decision of the Hearing Officer of the UK Intellectual Property Office in which she dismissed its application for invalidity of the UK trade mark (Decision O-180-15). The appellant’s original invalidity action against the UK trade mark was formulated on two grounds:

under section 5(2) of the Trade Marks Act 1994 (TMA 1994)—namely that the UK trade mark should not have been registered because the CTM is a similar mark registered for similar good and there is a likelihood of confusion between the respective marks

under TMA 1994, s 3(6) on the basis that the UK trade mark was applied for in bad faith—the applicant’s alleged intention being that the appellant would not discover its mark until post-registration

On what grounds did the appellant bring an appeal to the High Court?

The Hearing Officer rejected the invalidity claim in its entirety, finding neither sufficient similarity/likelihood of confusion, nor any evidence of a bad faith in the application for the UK trade mark. The appellant argued there was a distinct and material error of principle and that the Hearing Officer was clearly wrong, on the following key grounds:

when considering likelihood of confusion under TMA 1994 s 5(2), the Hearing Officer had failed to consider respective notional and fair use (such as advertising use) of the CTM and the UK trade mark

when considering similarity between the two marks under TMA 1994, s 5(2), the Hearing Officer had failed to appreciate the conceptual similarity between them—the conceptual meaning being goods/services related to maintaining or clearing gutters

What did the High Court conclude?

The court rejected the appellant’s argument that the Hearing Officer failed to consider notional and fair use of the trade marks at issue. In the decision [at 25], the Hearing Officer reviewed the scope of use for the respective trade marks—considering the purchasing process, and the fact that the cleaning services/rental of equipment covered by the UK trade mark may be bought by businesses or by the general public. She referred to the ‘average degree of care’ that would be taken by consumers in making purchases—the appellant’s goods likely to be bought by self-selection in store or online. She also considered that aural factors would come into play as the goods/services of the respective marks may be subject of word-of-mouth recommendations. The High Court concluded that a proper analysis of ‘fair and notional’ use had been conducted.

The court accepted that matters were a little more complex when it came to the appellant’s arguments concerning the Hearing Officer’s failure to consider conceptual similarities between the two marks. Following established case law (see C-251/95Sabel BV v Puma AG, Rudolf Dassler Sport [1997] All ER (D) 69, andC‑591/12: Bimbo SA OHIM), the Hearing Officer conducted an analysis considering the UK trade mark as a whole, rather than focusing on individual details in order to ascertain the overall impression made by the UK trade mark on the relevant market.

The High Court accepted that the Hearing Officer did not properly take into account the descriptive nature of both marks which comprise or include the words ‘gutter’ and ‘clear’ which together create a clear conceptual meaning. The court went on to state that if both were simply word marks there would be sufficient conceptual similarity to invalidate the UK trade mark on the basis of similarity between the marks and consequent likelihood of confusion. However, the matter was not that simple. While the CTM was a word mark, the UK trade mark was distinctive in its colour scheme (comprising black, blue and grey). Further, it was not appropriate to compare the marks as though the CTM—registered in monochrome—were in the same colours as the UK trade mark. Consequently, the marks were deemed visually different from one another.

In conclusion, although the Hearing Officer may have understated conceptual similarity, the High Court was nonetheless in agreement that she reached the right conclusion—there was insufficient similarity between the marks.

The High Court rejected the appellant’s contention that the UK trade mark was registered in bad faith, pointing out that there is no general duty upon trade mark applicants to inform their competitors—it was up to the appellant to keep itself informed of upcoming trade mark applications.

Is this ruling helpful in clarifying the law around challenging the validity of trade marks?

The High Court’s ruling is unsurprising as the Hearing Officer’s analysis of the validity action was correct and thorough—albeit if the conceptual similarity between the marks was understated.

This ruling does not raise any new points but it serves as a useful reminder that courts will assess marks on a global basis and analyse the overall impression rather than focusing on single elements and aspects. Therefore any conceptual or aural similarity—the words ‘gutter clear’ may be negated by visual differences such as the use of distinctive colour, font or combination with a device.

When challenging a Hearing Officer’s declaration of invalidity, it is not sufficient to be surprised by or disagree with the conclusion—an appellant must identify material errors in the application of law.

Jessica Stretch, solicitor in the Lexis®PSL IP & IT team.

This article is republished with kind permission of WIPIT’s sister site, Lexis®PSL IP & IT. For a free trial click here. The views expressed in this article are not necessarily those of the proprietor.  

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