Lotto Sport Italia loses to Liverpool FC

• Lotto Sport Italia opposed the registration of two device marks by Liverpool FC based on two earlier device marks
• The hearing officer found, among other things, that the marks were conceptually different because the applicant’s marks contained an interlocking diamond device, while the opponent’s marks contained a rectangular device
• The appointed person agreed, holding that the marks should be compared based on how they appear on the register and how they would be viewed by the average consumer

Professor Ruth Annand, sitting as an appointed person, has issued a decision in relation to an appeal against an unsuccessful opposition to UK trademark applications for the mark SGG APPAREL and a device of two overlapping diamonds and for the device mark without additional elements.

Background

In October 2017 The Liverpool Football Club and Athletic Grounds Limited (‘the applicant’) applied to register the marks for a range of goods and services, such as cleaning and personal care goods, jewellery, bags, textiles, clothing and consultancy services in relation to retail.

On publication of the application, Lotto Sport Italia SpA (‘the opponent’) filed an opposition, which was based on two grounds after amendment. The first ground was under Section 5(2)(b) of the Trademarks Act 1994, relying on identity or similarity between the marks applied for and the opponent’s earlier device marks and between the goods and services. The second ground was under Section 5(3) of the act, claiming reputation in one of its earlier device marks.

The opponent relied on two earlier device marks which differed only in their colour. One version of the device mark was in the colour black and the second version was in the colour white with a black outline, both of which were registered in Classes 3, 9, 14, 16, 18, 25 and 28. The second device mark was also registered in Classes 24 and 35.

UKIPO decision

The UK Intellectual Property Office rejected the opposition under Sections 5(2)(b) and 5(3). The hearing officer’s findings were as follows:

• The average consumer in relation to the wide range of goods and services would be members of the general public and businesses. The average consumer was likely to pay a medium degree of attention to the selection of the goods and services.
• Businesses were also likely to pay at least a medium degree of attention to the selection of the goods and services. The selections made from both the general public and businesses were likely to be on a visual basis, but include aural considerations.

When the hearing officer compared the goods and services of the marks, he considered that the opponent’s strongest case was on the basis of its registration of the second device mark. He therefore compared this mark first with the applicant’s earlier marks. In his comparison, the hearing officer found that the goods and services were identical or highly similar, with the exception of “advisory, consultancy and information services relating to the aforesaid” listed at the end of the applicant’s Class 35 specification, which he considered dissimilar to the opponent’s services because consultancy requires a different skill set to retailing. When the hearing officer considered the opponent’s other trademark registration, he found that there was identity or high similarity between the Class 3 goods and identity between the Class 14, 18 and 25 goods. However, the opponent did not have goods which were similar to the Class 24 goods or Class 35 services listed in the applicant’s specification.

In the hearing officer’s analysis of the applicant’s marks and the opponent’s device marks, he referred to the opponent’s device marks in a singular form instead of referring to them as individual marks. In the opponent’s submissions, it did not draw any distinction between the device marks and added that it used the device marks interchangeably depending on the colour of the surface to which they were applied.

The hearing officer suggested that the opponent’s strongest case for this comparison was against the applicant’s mark which consisted of the device only and did not contain the words ‘SGG apparel’ or any other verbal elements. He concluded that the marks were considerably different visually, that no aural comparison was possible because neither of the marks contained words, and that the marks differed conceptually. In his view, the marks were conceptually different because the applicant’s mark contained an interlocking diamond device, whilst the opponent’s mark contained a rectangular device.

The hearing officer also held that the opponent’s mark was inherently distinctive to a medium degree because it consisted of a relatively simple geometric design that had no meaning in relation to the registered goods and services, and that the average consumer was used to viewing non-verbal designs as trademarks, which assisted him with his conclusion. On further analysis, he concluded that the mark did not benefit from enhanced distinctiveness through use.

Taking into account the above conclusions and the principle of interdependency and imperfect recollection, the hearing officer concluded that there was no likelihood of direct or indirect confusion.

In relation to the first mark on which the opponent relied under Section 5(3), the onus was on it to prove that it had reputation in the mark in the United Kingdom. The opponent submitted turnover figures for the entire European Union, which were not broken down into EU member states, trademarks, or goods and services. This did not allow the hearing officer to conclude that the opponent had a reputation for a particular group of goods or services in relation to the mark in the European Union or in the United Kingdom. The hearing officer also found that the opposition under Section 5(3) would fail because a member of the public or a business would not link the applicant’s marks to the opponent’s mark.

Appeal decision

The opponent appealed against the decision to the appointed person. The applicant did not engage in the appeal.  

The first ground of appeal was that the hearing officer had erred in concluding that the applicant’s marks were not similar to the opponent’s mark. The opponent argued that the applicant’s mark could be viewed as interlocking squares, not diamonds, and that squares were similar to rectangles - which was the shape that the hearing officer used to describe the opponent’s mark. In addition, the opponent argued that the description of its first registration, which stated that “the mark consists of the figure of two partially superimposed diamond shapes forming a rhombus inside”, was of relevance. The opponent criticised the hearing officer’s visual assessment further, by submitting that the rectangular hole in the opponent’s mark was “closely similar” to the overlap between the two diamonds in the applicant’s mark. The opponent therefore disagreed that its mark was slightly more complex than the applicant’s mark, and that the parties’ marks were simple devices, instead suggesting that they shared “an element of ambiguity”. The opponent then stated that, because of the above points, the marks shared conceptual similarity.

The appointed person held that the marks should be compared in the form in which they appear on the register, and on the basis of how they would be viewed by the average consumer in relation to the goods and services. In her view, the hearing officer’s finding that there was no similarity between the marks was not erroneous. She added that a global appreciation between the marks was not necessary after the hearing officer’s finding regarding similarity, as the opponent also recognised, but that the hearing officer could have continued his analysis as a precaution. She therefore rejected the appeal under Section 5(2)(b).

In the second ground of appeal, the opponent submitted that the hearing officer had erred in concluding that the opponent’s mark did not possess enhanced distinctiveness or a reputation. The appointed person reviewed the evidence which was submitted by the opponent, and agreed with the hearing officer that the evidence did not prove the opponent’s claim of enhanced distinctiveness in the United Kingdom for its earlier mark. The opponent referred the appointed person to Iron & Smith kft v Unilever NV (Case C-125/14) and supported its reference by stating that it had sponsored Queen Park Rangers Football Club from 2008 to 2014, as well as providing a relevant press release. This evidence was used to suggest that a commercially significant part of the relevant public in the United Kingdom was familiar with the earlier mark. However, the evidence that was provided was dated three years before the filing date of the applicant’s marks. The appointed person did not find any reason to overturn the hearing officer’s findings under Section 5(3).

In the third ground of appeal, the opponent submitted that the hearing officer had erred in concluding that the services in the specification of the opponent’s earlier mark were not similar to the services in the applicant’s later marks. The appointed person concluded that this ground of appeal was irrelevant based on her previous findings. She also considered that the opponent may have incorrectly defined the relevant average consumer in relation to these services. The services which are provided to the consumer relate to the retailing of goods and services, whilst the services which are provided to businesses that engage in the retailing of the goods and services are the advisory, consultancy and information services.

The appointed person concluded that the appeal had failed in its entirety. As the applicant did not engage with the appeal, the appointed person held that it had not incurred any costs. She therefore made no order as to costs.

Comment

The decision confirms that, when assessing the similarity between marks, it is critical to consider how they appear on the register, and how they would be viewed overall by the average consumer, rather than relying on more abstract arguments.

This decision is also a reminder that parties should ensure that they provide sufficient evidence to support a claim under Section 5(3).