“Where grounds for refusal of an application for registration of trade mark exist in respect of only some of the goods or services in respect of which the trade mark is applied for, the application is to be refused in relation to those goods and services only.”
“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and (k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”
“If there is no similarity at all, there is no likelihood of confusion to be considered. If there is some similarity, then the likelihood of confusion has to be considered …”
“Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.”
“In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary.”
“(a) the uses of the respective goods or services; (b) the users of the respective goods or services; (c) the physical nature of the goods or acts of service; (d) the trade channels through which the goods or services reach the market; (e) in the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; (f) the extent to which the respective goods or services are in competition with each other; that inquiry may take into account how those in trade classify goods, for instance, whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.”
“… although the complementary nature of the goods at issue represents only one factor amongst several others — such as the nature, the method of use or the distribution channels of those goods — in the light of which the similarity of the goods can be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity.”
“In addition, the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application … or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark ….”
“(1) General terms are to be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services. (2) In the case of services, the terms used should not be interpreted widely, but confined to the core of the possible meanings attributable to the terms. (3) An unclear or imprecise term should be narrowly interpreted as extending only to such goods or services as it clearly covers. (4) A term which cannot be interpreted is to be disregarded.”
“cultural activities; organization of sporting and cultural events and activities; organization of exhibitions for cultural and educational purposes; organization of motor vehicle races; entertainment in the form of live motorsport races; entertainment in the form of live shows and events relating to motoring or motor vehicles; organization of real or virtual sports competitions, particularly mechanical sports competitions; organization and conducting of award ceremonies and gala ceremonies for entertainment purposes”
“[…] cultural activities; organization of sporting and cultural events and activities; organization of exhibitions for cultural and educational purposes. 21. Mr Wood submitted that these terms could include the provision of theatre shows and that there is, therefore, some similarity with ‘booking of seats for shows’ in the opponent’s specification. I agree. The same businesses that provide and organize shows are also likely to provide services for the booking of seats. There is an overlap in user. I also consider the services to be complementary. The nature, purpose and method of use differ. Consequently, I consider the services to be similar to a medium degree. Organization of motor vehicle races; entertainment in the form of live motorsport races; entertainment in the form of live shows and events relating to motoring or motor vehicles; organization of real or virtual sports competitions, particularly mechanical sports competitions. 22. I accept that the organization of different types of events would also involve the provision of a booking service for seats at that event. Consequently, there would be some overlap in nature, user, method of use and purpose with the opponent’s ‘booking of seats for shows’. I do not consider it likely that the trade channels would overlap significantly, nor do I consider there to be complementarity or competition. Consequently, I consider there to be a medium degree of similarity. … Organization and conducting of award ceremonies and gala ceremonies for entertainment purposes. 43. I consider that the same reasoning applies to these services as set out in paragraph 22 above. Consequently, these services are similar to a medium degree.”
“28. Ms. Blythe [counsel then appearing for the Applicant] submitted that organisers of sporting and cultural activities and events and of exhibitions may sell tickets to their own events or shows but they do not sell tickets to events or shows of third parties or in the market generally. They are not competing for a share in that market. They do not operate, for example, as a ticket agency. The selling of a ticket for the event being organised is incidental to the core business of organising the relevant activities. It is not clear that Avnet was relied upon in submissions before the Officer but the respondent does not object to the appellant advancing its submissions in this way. 29. Ultimately, Mr. Wood’s [the Opponent’s trade mark attorney’s] response to that submission was that in the third sentence of paragraph 21 of the decision, the Officer was stating that organisers of shows are likely to provide for the booking of seats not only for their own events but also those of third parties. But Mr. Wood very fairly accepted that if paragraph 21 of the decision is not to be read in the way he suggests, in other words it means that the organisers of shows sell seats for their own events but not third party events, then the Officer ‘probably fell into error’. With respect he did not advance any submissions against the analysis by Ms. Blythe as such. 30. From the transcript of the hearing before the Officer it is plain that it was not suggested to her that organisers of shows or events would sell any tickets other than for their own shows and events. 31. Although both parties agreed that the Officer was entitled to come to her own view of the matter and that would not involve procedural unfairness, there is nothing in the decision to indicate that her reasoning was based on organisers of shows or events selling seats for third party events. If she had taken that wider view, in my judgment, she would have been bound to say so in express terms, partly in order to comply with her duty to give reasons (see rule 69 of theTrade Marks Rules 2008 SI 2008 No.1797). In my judgment parties familiar with the issues and submissions in this case would have no reason to think that the Officer had taken that wider view of the activities proposed for the contested mark. If I had considered that it was possible to read paragraph 21 in the wider manner contended for by Mr. Wood, in other words as covering seat sales for third party shows and events, I would have had no hesitation in concluding that there was failure to give adequate reasons, applying established principles, and I would have upheld this first part of ground 1 on that basis. 32. However, I prefer to say that the Officer did not reach a conclusion in paragraph 21 by relying upon a point which is not contained in the decision at all, and which would have involved a breach of the duty to give reasons. Instead, she proceeded on the basis that organisers sell tickets for their own events but not third party events. In these circumstances, I agree with Ms. Blythe’s analysis based on Avnet. The same analysis applies to paragraphs 22 and 43 of the decision. In my judgment it follows that none of the appellant’s activities described in paragraphs 21, 22 and 43 of the decision could be reasonably said to be similar to an activity covered by the existing mark, in particular the booking of seats for shows. 33. On the submissions before me, the mere fact that seats may be booked for shows by members of the public cannot create a material overlap sufficient to support a finding of similarity. In relation to the existing mark, seats may be booked for shows organised by third parties, but that activity does not include the organising of shows. In relation to the contested mark, the core or substance of the activity relates to the organising of shows (and events) for which the booking of seats (where available) is merely incidental and no booking of seats for third party shows (and events) is involved.”
“35. I will briefly deal with the remaining points which concern sport related matters. Ms. Blythe’s submissions applied to the organising of sporting events under paragraph 21 and the whole of paragraph 22. I do not accept her suggestion that the word ‘show’ is used for the existing mark only in the sense of a theatrical show. The term would include such a show, but it would also embrace shows of all kinds whether inside a building or outside. A show could include a display or exhibition or a spectacle or entertainment of some kind, but it would have to be something for which seats could be booked. Although a sporting event may well be watched by spectators, that is insufficient to make it a show. 36. To the average consumer the core or substance of a sporting event is a game or activity which involves physical exercise and/or skill. A football or rugby match would not ordinarily be described as a show, even in the case of an exhibition tennis match the focus is still on the sport. The Officer’s decision does not supply any reasoning as to why a sporting event or motor sport event should be considered as a show. There is nothing to suggest that these issues were considered. The point was not advanced by the respondent. The decision in paragraphs 21 and 22 in relation to sport-related matters cannot stand. 37. In addition, I accept Ms. Blythe’s submission that sporting events do not necessarily involve the use of seats or, even where they do, seating which is bookable. It does not appear from the decision that those matters were taken into consideration by the Officer. Certainly she gave no reasoning in relation to them. To that extent also ground 1 succeeds.”
“It is well established that judicial caution and restraint is required when considering whether to set aside a decision of a specialist fact finding tribunal. In particular: (i) They alone are the judges of the facts. Their decisions should be respected unless it is quite clear that they have misdirected themselves in law. It is probable that in understanding and applying the law in their specialised field the tribunal will have got it right. Appellate courts should not rush to find misdirections simply because they might have reached a different conclusion on the facts or expressed themselves differently: see AH (Sudan) v Secretary of State for the Home Department[2007] UKHL 49 ;[2008] AC 678 per Baroness Hale of Richmond at para 30. (ii) Where a relevant point is not expressly mentioned by the tribunal, the court should be slow to infer that it has not been taken into account: see MA (Somalia) v Secretary of State for the Home Department[2010] UKSC 49 ;[2011] 2 All ER 65 at para 45 per Sir John Dyson. (iii) When it comes to the reasons given by the tribunal, the court should exercise judicial restraint and should not assume that the tribunal misdirected itself just because not every step in its reasoning is fully set out: see R (Jones) v First-tier Tribunal (Social Entitlement Chamber)[2013] UKSC 19 ;[2013] 2 AC 48 at para 25 per Lord Hope of Craighead.”
“5. The Hearing Officer wrongly interpreted the [Opponent’s] term ‘booking of seats for shows’ in Class 41 at paragraphs 21 and 22 of the Decision. Given its natural interpretation, that term covers the specific service of booking seats for the shows of third parties. When a show organiser offers tickets itself, that is not a distinct service of booking seats. The service of booking of seats for shows is a separate service to that being offered by the event organiser and is provided by entities such as Ticketmaster which offers the service of booking seats for multiple shows (from multiple different event organisers). 6. In the premises, the Hearing Officer was wrong to conclude at paragraph 21 that the same businesses that provide and organise shows are the same business that offer the specific service of booking seats for shows. Thus, the Hearing Officer should not have found that there was an overlap in user.”