Gutterclear - a clear case of trade mark validity?

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 

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