The Lunan Group Ltd v Edwin Co Ltd [2006] EWHC 3284 (Ch)

Case Nos: CH/2003/APP/006&7[2006] EWHC 3284 (CH)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
ON APPEAL from
The Comptroller-General of Patents, Designs and Trade Marks
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate Thursday 14 th December 2006
Before
Mr Alan Steinfeld QC(sitting as a deputy judge of the High Court)
Between
THE LUNAN GROUP LIMITEDApplicantEDWIN CO. LIMITEDRespondent
IN THE MATTER of the Trade Marks Act 1994
AND IN THE MATTER of the Trade Mark Application No. 2 195 383 for the registration of the mark FIORELLI in Classes 9, 14 and 18 and Opposition No. 50920
AND IN THE MATTER of the Trade Mark Application No. 2 219 833 for the registration
of the mark FIORELLI in Class 25 and Opposition No. 52204
Mr George Hamer (instructed by Mayer Brown Rowe & Maw) for ApplicantMr Michael Edenborough (instructed by Medyckyj & Co) for RespondentHearing Hearing dates: 23 and 24 November 2006
Judgment

Mr Alan Steinfeld QC:

[1]There come before me two appeals pursuant to Section 76 of the Trade marks Act 1994 (“the Act”). Both appeals are by a company called The Lunan Group Limited (“the Applicant”), which appears before me by Mr Hamer, against the refusal of the Registrar of Trade Marks, acting by his hearing officer, a Mr S.P. Rowan (“the Hearing Officer”), by written determinations made by him on 6th December 2002 to register in various classes the trade mark “FIORELLI” which the Applicant owns. The applications were opposed in each case by a company called Edwin Co. Limited (“the Opponent”), and which is the respondent to each appeal, appearing before me by Mr Edenborough, on the ground that the mark sought to be registered was confusingly similar to its own already registered trade mark “FIORUCCI” and so ought not to be registered on the ground set out in section 5(2)(b) of the Act.[2]On each application the Hearing Officer by his written determinations upheld that opposition. That is to say he held that within the meaning of section 5(2)(b) because the Applicant’s trade mark was similar to the Opponent’s earlier trade mark already registered and was to be registered for goods identical with or similar to those for which the earlier trade mark was protected, there existed “a likelihood of confusion on the part of the public, which included the likelihood of association with that earlier trade mark”. Each appeal is against those determinations[3]The appeals thus raise in each case the same or virtually the same issues, and the evidence which was before the Hearing Officer on each application was the same or virtually the same. Indeed, although there are two separate written determinations made by the Hearing Officer, there was a single hearing before him. The difference between the two applications relates solely to the classes of goods in respect of which the Applicant seeks to register its trade mark. It is, however, common ground that both marks have been and are being used in what can loosely be termed the fashion or “designer goods” market. The first application sought the registration of the FIORELLI mark in Classes 9 (spectacles and sunglasses), 14 (watches and jewellery) and 18 (bags, small leather goods and umbrellas). In the second application the registration is sought in respect of Class 25 (clothing). Background[4]The history of the two marks and the use to which they have respectively been put was covered in some detail in the evidence before the Hearing Officer and was not in dispute. The earlier of the two marks, namely the Opponent’s mark “FIORUCCI”, has been in use since the early 1970’s. The name derives from the surname of the Italian designer, Sr Elio Fiorucci, who first began selling products under the name FIORUCCI in Italy in 1967. The products thus sold have consisted of “designer clothing and other fashion accessories such as sunglasses, bags, jewellery, stationery and watches” (paragraph 11 of the Witness Statement of Mr Nicholas Vratsidas made on 21st December 2000). These products have over years been sold in a large number of Italian cities and, since about 1971, in the UK. The turnover in the UK reached a peak of about £3 million in 1988. However, in 1990 the Fiorucci group suffered a setback when it went into liquidation. The Opponent subsequently purchased the business, including the trade marks. It seems that the business in the UK was re-established in or about the year 1995. From that year until 1999 sales in the UK of FIORUCCI branded products were approximately £1 million per annum (paragraph 10 of Mr Vratsidas’s Witness Statement). That figure has not, however, been broken down as between clothing and other fashion accessories, including handbags, although it was apparently said to the Hearing Officer that it consisted predominantly of clothing. The FIORUCCI mark was first registered on 30th August 1979 in Class 25 (i.e. clothing) and subsequently on 27th July 1981 in Class 18 (bags, small leather goods and umbrellas).[5]The FIORELLI mark did not commence to be used in the UK or, indeed, so far as the evidence goes, anywhere else until the early 1990’s. At first the use was restricted to the sale of leather handbags and other like accessories. However, later, from about 1993 onwards, the sale of FIORELLI branded products extended into watches, sunglasses and footwear. From 1993 onwards the brand has also been extended to clothing. The turnover under the FIORELLI trade mark has been far more extensive than that under the FIORUCCI trade mark. So, to give some figures (taken from the undisputed evidence before the Hearing Officer):(i) in 1995 sales of FIORUCCI products were £968,032, as compared to sales of FIORELLI products totalling £3.3 million in respect of bags and small leather goods, £55,000 in respect of eyewear and £100,000 in respect of clothing;(ii) in 1996 estimated sales of FIORUCCI products were £1.025 million, as compared with sales of FIORELLI bags and small leather goods of £4.3 million, eyewear of £62,000 and clothing of £100,000;(iii) in 1997 sales of FIORUCCI products were £926,883 as compared with sales of FIORELLI bags and small leather goods of £6.1 million, eyewear £90,000, watches £31,000, umbrellas £11,000 and clothing £333,000;(iv) in 1998 sales of FIORUCCI products were £973,246 as compared with sales of FIORELLI bags and small leather goods £8 million, eyewear £70,000, watches £49,000, umbrellas £25,000 and clothing £370,000.(v) in 1999 sales of FIORUCCI products were £934,087 as compared with sales of FIORELLI bags and small leather goods £8.5 million, eyewear £59,000, watches £60,000, umbrellas £69,000 and clothing £700,000.[6]In June 1992 application was first made to register the FIORELLI trade mark in Class 18. At that time there was no opposition from FIORUCCI. Mr Edenborough asked me to infer that that was probably to do with the fact that the FIORUCCI group had only shortly before then gone into liquidation. That may or may not be the case. The Registrar had, it seems, some concerns as to the similarity of the mark with some earlier trade mark, which was probably the FIORUCCI mark. However, the FIORELLI mark was in due course registered on 5th April 1995 in Class 18. The subsequent applications, which were refused and which are the subject of this appeal, are, therefore, essentially to extend the registration to the other areas of sales into which FIORELLI has expanded, namely eyewear, watches and jewellery and clothing. The Determinations of the Hearing Officer[7]The Hearing Officer dealt with both applications in two separate determinations. As the evidence and the submissions were substantially the same in both applications, not surprisingly those determinations are similar in form and content. Before me submissions were largely concentrated on the determination in respect of the Class 25 application. In the circumstances I shall concentrate also on that determination, but making reference to the other determination where requisite.[8]The determination is on its face carefully structured and very comprehensive. Mr Hamer, who has considerable experience of appearing before the Registrar’s hearing officers on these applications, assures me that the format of the determinations in these matters is largely standard. Whilst that may be so, it does not seem to me that that in any way detracts from the comprehensiveness of the determination and the very careful way in which the Hearing Officer, who I take to be highly experienced in these matters, dealt with the applications.[9]In paragraphs 5 to 38 the Hearing Officer dealt thoroughly with the evidence before him, summarising the main points which were made in the various Witness Statements. In paragraphs 39 to 42 he dealt with the applicable law. In particular in paragraph 41 he set out the various factors, numbering nine in all, which the authorities, in his view, made clear he ought to bear in mind in considering the test for confusing similarity under Section 5(2)(b). It is accepted by both Counsel before me that that paragraph contained an accurate summary of the relevant factors.[10]In the ensuing paragraphs the Hearing Officer then set out to apply each of these factors to the marks in question.[11]The first matter which the Hearing Officer considered was the “Reputation/inherent distinctiveness of the earlier trade mark”. As he put it in paragraph 44: “The case law set out above indicates that one of the many factors to be taken into account is the distinctiveness of the Opponent’s earlier trade mark. The mark may possess that distinctive character because of the inherent nature of the mark, or it may enhance its distinctive character through the use that has been made of it. Therefore, in reaching a decision under Section 5(2)(b), it is necessary to look at the Opponent’s trade mark, to assess its inherent capacity to distinguish and to look at the use that has been made of the mark”.[12]This the Hearing Officer proceeded to do in paragraphs 45 to 54. In paragraph 47 he remarked that there was no dispute as to the nature of the mark, FIORUCCI being an Italian surname. He went on to state his view that the mark would be an “unfamiliar word to the British buying public” and that as such it seemed to him that it had “a high degree of distinctive character per se”. The Opponent sought further to rely on the “enhanced distinctiveness” of the mark arising from the use that had been made of it. But the Hearing Officer, after examining, in paragraphs 49 to 53 the use that on the evidence had been made of the mark, concluded on this point (paragraph 54) that the mark did not, in his view, enjoy “an enhanced reputation” at the relevant date, being the date of the application. His overall conclusion, on this point, (paragraph 55) was that, although the Opponent’s mark possessed a high degree of distinctiveness per se, “that distinctive character has not been enhanced through the use that has been made of the trade mark”.[13]In paragraph 56 the Hearing Officer observed that it was accepted that the goods covered by both the application and the earlier trade mark were identical. I do not think he can have meant this literally. What he must have meant, and which was common ground before me as it must have been before the Hearing Officer, was that the goods covered by both the application and the earlier trade mark were of in respect of identical types of goods. The Opponent’s evidence was to the effect that the goods produced and sold under its trade mark were highly distinctive. As Mr Jones in a witness statement filed on behalf of the Opponent put it (para. 3):
“To me, FIORUCCI and ELIO FIORUCCI are synonymous with an eclectic global style, and pop culture. The brands are easily recognisable, and very much have their own style”
[14]The Hearing Officer then went on, under the heading “Comparison of the trade marks”, to compare the two trade marks taking into account, as he put it, “any visual, aural or conceptual similarities”. Again it is not challenged by Mr Hamer before me that in so doing he was embarking upon the proper course. In paragraph 57 he stated that he had to judge the matter “through the eyes of the average consumer who is deemed to be reasonably well informed and circumspect. The average consumer of both the Applicant’s and Opponent’s products would be ordinary members of the public”. It was accepted before me that this was the correct test. In the same paragraph he went on further to observe that, as the goods in question were clothing, they would primarily be chosen by eye (making reference to the decision in React Trade Mark [1999] RPC 529) and so “visual similarities/ dissimilarities between the marks would assume more importance”. There was no challenge before me that this was the correct test (although Mr Hamer submitted that the Hearing Officer did not proceed to apply that test correctly). It was, furthermore, not challenged before me that the same test applied to the goods the subject of the other application.[15]In paragraphs 58 to 59 the Hearing Officer considered carefully the visual similarities between the two marks. He observed that visually both marks were the same length, each consisting of eight letters. They shared the same first four letters and both ended in an “I”. He also naturally observed the difference in the last four letters, but noted the submission on behalf of the Opponent, that even in these four letters there was a degree of similarity, which he stated had “some merit”. He went on, however, to say that he had to be “careful not to over analyse the mark” as the authorities showed that “the average consumer normally perceives the mark as a whole and does not proceed to analyse its various components”. Applying that test he concluded (in paragraph 59) that taking all the factors he set out into account, he found that there was, as he put it, “a high degree of visual similarity between the two trade marks”. One factor that he took into account in reaching this conclusion was that, just as it was, as he put it “well established that in aural use the beginning of words assumes more importance with the ends of words tending to become slurred”, it seemed to him that similar considerations applied when considering visual similarity and that “as the similarity between these two marks occurs at the beginning of the marks this point of similarity is more likely to come to the attention of the average consumer”. The Hearing Officer had in mind, as he made clear in the next paragraph, the observation of Sargant L.J. in London Lubricants Ltd’s Application (1925) 42 RPC 264 at page 279.[16]As regards aural similarity, after referring to the observation of Sargant L.J., he in fact concluded that in this case the emphasis would probably be on the last four letters of the word in each case rather than the first four. And so, although they occurred at the end of the two marks, it seemed to him that they did “present a point of aural dissimilarity between the two marks”. He therefore concluded that there was some aural similarity but that it was not high.[17]In paragraph 61 he dealt with conceptual similarities. The only similarity between the two marks which he observed was that each appeared to be an Italian surname.[18]His overall conclusion in this section of his determination (paragraph 62) was that there was, as he put it, “a high degree of visual similarity and some aural and conceptual similarity between the marks”. In fact, as it seems to me, on his own finding in paragraph 60, the aural similarity was slight and of not great importance, given his observation (in paragraph 57) that as the goods would primarily be chosen by eye, it would be the visual similarities/ dissimilarities which would assume importance. Equally, it seems to me that, as the only conceptual similarity between the two marks which the Hearing Officer observed was that they both appeared to be an Italian surname, such in itself he must have felt was only of slight relevance, given that the market for high fashion designer goods is dominated by Italian or Italian sounding surnames.[19]In the next section of his determination (paragraphs 63 to 65) the Hearing Officer dealt with what he described as “the Applicant’s use and evidence as to confusion”. The way in which he did so has assumed significant prominence on this appeal. There were, as he observed in paragraph 63, essentially two points that in this regard were taken on behalf of the Applicant. The first was that, given that both marks had been in the market place for some time, the absence of any evidence of confusion was a factor that ought to be taken into account when assessing the likelihood of confusion. The second point was the evidence of third parties filed by the Applicant stating that they would not confuse the two trade marks.[20]As to the first point, the Hearing Officer commenced (in paragraph 64) by stating that he accepted that “where two marks can be shown to have co-existed in the market place, parallel use of the two marks can be a factor to take into account in the global appreciation under Section 5(2)”. He went on, however, to observe that in this regard he had only what he described as “very limited evidence of parallel use”. Of course the Hearing Officer had significant evidence before him of the use of the two marks in the UK market, as to the use of the FIORUCCI trade mark since the 1970’s with, perhaps, a gap between 1990 and 1994 following the liquidation of the then owner of the mark and, as regards the FIORELLI mark, the Hearing Officer had evidence of significant trading in various types of goods since the early 1990’s.[21]However, in coming to the conclusion that there was “only very limited evidence of parallel use” the Hearing Officer made a critical distinction. In the one case he had an application before him for registration in Class 25, which was clothing. In the other case he had an application before him in relation to Classes 9, 14 and 18 (eyewear, watches and handbags etc.). He accepted that the Applicant had shown a large amount of use of the trade mark in respect of bags, and to a lesser extent on other accessories. As to clothes, he took the view that the evidence did not substantiate the Applicant’s claim to prolonged use on clothing, this despite the fact that, as is apparent from my observations above and, indeed, the observations of the Hearing Officer himself in the earlier part of his determination, the Applicant had adduced unchallenged evidence of the use of its trade mark in relation to clothes since 1996, the turnover increasing from £100,000 in that year to in 1999 a figure of about £700,000, which was not hugely short of the Opponent’s own turnover in that year. What, however, he seems to have held is that for this purpose he was only entitled to take account, as constituting the relevant market, turnover in the particular goods in respect of which the application was being made. So in the application to register the mark in Class 25 (clothing) he would, before taking this factor into account at all, have required evidence of prolonged use of the FIORELLI brand in respect of clothing. He held that that in his view that had not been shown. The corollary in the other application was that, although prolonged use of the mark in the Classes applied for had been shown, before taking into account parallel trading, he would have to have had evidence of prolonged and significant use of the FIORUCCI mark in those classes, of which there was no or little evidence (this, it seems to me, is in substance what he was observing in paragraph 31 of his determination in respect of the other application).[22]As to the second point, the Applicant had adduced a large number of witness statements from persons prominent in the fashion world all of whom expressed their view that consumers were unlikely to be confused by the two marks. Indeed, in some cases the deponent stated that he/she had never even heard of the FIORUCCI mark. The Hearing Officer concluded (paragraph 65) that it was well established that the question of likelihood of confusion was primarily a matter for the Tribunal and that, having reviewed all this evidence, he was of the view that the deponents were merely giving their respective opinions (as to the likelihood of confusion) and, not being qualified to give what was essentially expert evidence on that point, their views were irrelevant.[23]The Hearing Officer concluded his determination by stating what he said were his “conclusions under Section 5(2)(b)”. In so doing he adopted the test stated by Mr Hobbs Q.C. sitting as the “Appointed Person” in Balmoral Trade Mark [1998] R.P.C. 297 at page 301, which was whether there were:
“…similarities (in terms of marks and goods) which would combine to create a likelihood of confusion if the “earlier trade mark”, FIORUCCI, and the sign subsequently sent in for registration, FIORELLI, were used concurrently in relation to the goods for which they are respectively registered or proposed to be registered.”
At paragraph 68 he expressed the view that this question should be answered in the affirmative and that in so doing he had: “ taken account [of] the inherent distinctiveness of the opponent’s marks and the identicality of the goods and that a lesser degree of similarity between the marks can be offset by a greater degree of similarity/identicality between the goods”. “ taken account [of] the inherent distinctiveness of the opponent’s marks and the identicality of the goods and that a lesser degree of similarity between the marks can be offset by a greater degree of similarity/identicality between the goods”.[24]In paragraph 69 he summarised the factors which he had taken into account to reach this conclusion, namely that he had found “some aural and conceptual similarities between the marks and a higher degree of visual similarity”. Mr Lunan for the Applicant had given evidence as to the way in which the products in question were selected. The substance of his evidence was that they would not be the subject of a rushed or hurried purchase. The Hearing Officer stated expressly that he had taken that into account but, as he put it:
“That may be so, but I must also take into account that “the average consumer is unlikely to see the marks side and side and must instead carry around with them an imperfect picture of the mark in their head, so called imperfect recollection”
.

The Appellate Function

(b) The Appellate Function The Appellate Function

[25]The issue before me on these appeals is whether there are any grounds upon which I can or should set aside this conclusion.[26]It is well established on the authorities that this is an appeal in the proper sense and not a re-hearing. In this regard I have been referred to two decisions, both of the Court of Appeal, the first being Reef Trade Mark [2003] R.P.C. 5, the second being Bud and Budweiser Budbrau Trade Marks [2003] R.P.C. 25.[27]In the Reef Trade Mark case the appellants had applied to register the trade mark “Reef”. It had been opposed by the opponents on the ground that it was confusingly similar to their own earlier trade mark “Reef Brazil”. The Registrar had allowed the application on the ground that in his view the trade marks were unlikely to be confused. There was an appeal to the High Court which was heard by one of the patent judges, Pumphrey J. He concluded that the Registrar, through his hearing officer, had erred, that the two marks were in his view confusingly similar and that therefore the application to register the later mark should be dismissed. In the further appeal to the Court of Appeal the first issue that the Court had to consider was, as it was put in the judgment of Robert Walker L.J. (as he then was), delivering in substance the judgment of the Court, what was “the appellate function”, that is to say what is the function of the High Court on an appeal from a determination of the Registrar. Having reviewed the various authorities, which included: i) the observation of Buxton L.J. in Norowzian v Arks Limited [No.2] [2000] F.S.R. 363 at page 370, to the effect that where it is not suggested that the judge has made an error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in that Court, or of at least two of them, would be different from that of the trial judge, and ii) the observation of Hoffmann L.J. in Re Grayan Building Services Limited [1995] Ch. 241 at page 254, citing from an earlier decision of the Court of Appeal, to the effect that “the vaguer the standards and the greater the number of factors which the court has to weigh up in deciding whether or not the standards have been met, the more reluctant an appellate court will be to interfere with the trial judge’s decision”, and referring (paragraph 28) to “the degree of respect which has traditionally been shown to a hearing officer’s specialised experience”, he went on to conclude (in the same paragraph): “….an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle”. (emphasis added)[28]The learned Lord Justice concluded (in paragraph 40) that the judge was wrong to have reversed the determination of the Hearing Officer on the Section 5(2) issue. He stated that he had reached that conclusion:
“with some hesitation, because the judge (as well as the hearing officer) has great experience in trade mark matters, and it might be said that he was in as good a position to evaluate the written material. I am also inclined to share the judge’s view that Reef is a prominent and distinctive part of Reef Brazil, and that the hearing officer might have attached more weight to that. Nevertheless I consider that the hearing officer did not err in principle nor was he clearly wrong. The judge’s criticisms of the hearing officer had little substance. He ought not to have substituted his own view.”
[29]In the Bud case the actual issue in the case was not quite the same as in the present case. However, essentially the same issue arose in the Court of Appeal as to the circumstances in which a judge of the High Court, to whom an appeal against the hearing officer’s determination had been made, was justified in interfering with and setting aside that determination. The Court of Appeal held that he was not so justified. Lord Walker (as had now become) put the point in paragraph 52 and 53 of his judgment in the following very telling terms:- “Ultimately the issue on the first appeal is whether the deputy judge was right to discern two errors of principle in the hearing officer’s approach, opening the way for the deputy judge to substitute his own view. For the reasons which I have explained, I do not think that the hearing officer did make any significant error of principle which appears from his written decision. I do find his conclusion surprising and, if this Court had a free choice between the hearing officer’s decision and that of the deputy judge, I would unhesitatingly choose the latter. However, this Court does not have a free choice, as Sir Martin Norse has explained in his Judgment. [He then makes reference to the observations of Buxton L.J. in the Norowzian case to which I have already referred and continued] “The same principle applies to an appeal from a hearing officer to a judge of the Chancery Division. Although the hearing officer’s decision is one which I find surprising, I do not consider that it can be described as clearly wrong. Therefore I agree (although possibly with more hesitation than my Lords) that the first appeal should be allowed.”[30]The principle which I discern from these authorities is that I am not permitted to interfere with the determination of the Hearing Officer in this case, even if I were strongly to disagree with the conclusion which he reached, unless I am able to find that in reaching that conclusion he made some distinct and material error of principle or his decision was such as can be described as “clearly wrong”. Grounds for Interfering with the Determinations – Material Errors of Principle[31]Mr Hamer submitted to me that the Hearing Officer had materially erred in a number of respects. In the end, as it seems to me, there are only two serious such respects which could amount to a material error of principle by the Hearing Officer. Matters which are not material errors[32]I should, however, deal first with those matters raised by Mr Hamer which either I do not regard as being respects in which the Hearing Officer erred or, if there is any criticism, the same does not, in my view, amount to a material error of principle:-(a) Conceptual similarity: Mr Hamer criticises the conclusion reached by the Hearing Officer in this respect and to which I have made reference above. As I have already stated the only conceptual similarity between the two marks which the Hearing Officer observed was that they both would seem to the average consumer to be an Italian surname. Mr Hamer submits that conceptual similarity can essentially only arise at all where the mark conveys a concept or picture. The fact that the same marks apply to surnames is not, he submits, a conceptual similarity at all, and so the Hearing Officer should have ignored this altogether. He cites the example of “Smith” and “Pettigrew” which are surnames but such does not make them any more likely to be confused. There is, as it seems to me, a distinction to be drawn between English surnames and, to a consumer in the English market, foreign sounding surnames, such as Italian surnames. It seems to me that there is a form of conceptual similarity between two Italian surnames to an English consumer. However, the weight to be attached to that similarity is a matter for the Hearing Officer. It is apparent to me that, for reasons that I have already stated, little weight was in fact attached here by the Hearing Officer to that similarity. It does not seem to me that this constitutes any error, let alone error of principle, on the part of the Hearing Officer which would justify interfering with his determination.(b) Distinctiveness by nature and by nurture: Mr Hamer criticises the Hearing Officer for having concluded that the mark FIORUCCI possessed “a high degree of distinctiveness per se”, notwithstanding that that mark is used in a field where Italian surnames are common, but without also considering on that basis that the mark FIORELLI also possessed a high degree of distinctiveness per se. In my judgment there is nothing much in this point. Rather like the criticism relating to conceptual similarity, it seems to me that the answer is that to an English speaking person, at least, the mark FIORUCCI does possess a high degree of distinctiveness per se. It also seems to me that to an English speaking person the mark FIORELLI possesses a similar distinctiveness, which I cannot believe that the Hearing Officer overlooked. Even if this was one of the factors which the Hearing Officer took into account, it does not appear to me, at least from paragraph 69 of the determination, that this was a matter that weighed particularly strongly with him. In any event the weight to be attached to any particular factor is entirely a matter for the Hearing Officer. It does not seem to me that in this respect the Hearing Officer can be said either to have erred in principle or to be clearly wrong.(c) Evidence of how goods could be expected to be purchased: Mr Hamer criticises the Hearing Officer for failing to give sufficient, if any, weight to, as it is put, the unchallenged evidence of Mr Lunan to the effect that customers for these types of goods will generally take a great deal of care in their selection and can be expected to pay a particularly high degree of attention to the brand name appearing on the product. The weight which in coming to his conclusion the Hearing Officer should place upon these factors is clearly, so it seems to me, a matter for him. It is plain from paragraph 69 of his determination that this evidence was not ignored. On the contrary it was carefully considered by the Hearing Officer. But, as noted above, he took the view that the average consumer was unlikely to see the marks side by side and, accordingly, however carefully he examined the goods, he would still only have an imperfect recollection of the other mark. It does not seem to me that in so doing the Hearing Officer can be said to have erred in principle or was plainly wrong.(d) Over-analysing the mark: Mr Hamer criticises the Hearing Officer for falling into the trap, as he put it, of over-analysing the mark when he came to consider the visual, aural and conceptual similarities between the two marks. If he did so, he was ignoring the principle which he himself set out in paragraph 41(d) of his determination, namely that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The criticism related essentially to the way in which, in paragraphs 58 to 60 of his determination, he broke down the marks into their respective constituent elements in order to assess their similarity. However, having done that in paragraph 58 of his determination, he commenced in paragraph 59 to pose the question “Taking the marks as a whole what are my conclusions?”. In my judgment his approach cannot be criticised. One has to break the mark down into its constituent elements in order to analyse their similar features. As Lord Walker put it in the Bud case (supra at paragraph 44) “the distinctive character of a trade mark, what makes it in some degrees striking and memorable, is not likely to be analysed by the average consumer, but is nevertheless capable of analysis”, He continued in paragraph 45 to observe that it is for the Registrar “through the hearing officer’s specialised experience and judgment, to analyse the “visual, aural and conceptual” qualities of the mark and make a “global appreciation” of its likely impact on the average consumer who:- …normally perceives the mark as a whole and does not proceed to analyse its various details.” It does not seem to me that the Hearing Officer in this case did anything beyond that which Lord Walker in this passage envisaged would in a normal case have to be done. In my judgment there is nothing in this point.[33]I now come to the two points which, as it seems to me, could be said to amount to material errors of principle by the Hearing Officer or, at least, amount to matters where the Hearing Officer was plainly wrong. Visual Similarity[34]The first matter relates to that part of his reasoning in paragraph 59 of his determination which led him to conclude that there was a “high degree of visual similarity” between the two marks (my emphasis). This was, on my reading of the determination, probably the major factor which the Hearing Officer took into account in coming to the conclusion that within the meaning of the Section, there was such similarity between the two marks that there was a “likelihood of confusion on the part of the public”. As observed above in coming to this conclusion the Hearing Officer had stated:
“It is well established that in aural use the beginning of words assumes more importance with the ends of words tending to become blurred. It seems to me that similar considerations apply when considering visual similarity. As the similarity between these marks occur at the beginning of the marks, this point of similarity is more likely to come to the attention of the average consumer”
. It seems to me that this was plainly wrong. Indeed, Mr Edenborough for the Opponent did not before me seek to support its correctness. The reference to the aural use of words is, as already observed, a reference to the observation of Sargant L.J. in the London Lubricants Limited’s case (supra). In the first place that observation, it seems to me, must be treated with caution, even when considering the aural similarity between two marks. The observation must be considered both in the context of the particular marks which the Court of Appeal was considering and in the context of a case which was heard and determined over 80 years ago. Indeed, the Hearing Officer himself in paragraph 60, when dealing with the aural similarity between the marks, did not place much reliance on the fact that the similarity between the words was at the beginning rather than at the end of the word. He specifically stated that the endings of the marks in this case presented a point of such aural dissimilarity between the two such that, although there was some aural similarity, he did not regard it as high. Secondly, even taking the remarks of Sargant L.J. at face value, it is impossible to say that “similar considerations apply when considering visual similarity”. That would involve the absurd proposition that the vision of a person looking at a mark which consists of a word becomes in some way more blurred towards the end of the word than at the beginning of the word. This, to my mind, is clearly wrong. From a purely visual point of view a person looking at a mark, whether it be a word or a symbol, is going to look at it as a whole.[35]If one took out of consideration this point, where, in my view, the Hearing Officer was plainly wrong and did, accordingly, as it seems to me, err in principle, there are, of course, still points of visual similarity between the two marks. Had this, it seems to me, been the only criticism to make of the Hearing Officer’s determination, I might have concluded that, notwithstanding this error, the Hearing Officer was entitled overall to come to the conclusion which he reached – and so the error was not material. Parallel Trading[36]However, there is Mr Hamer’s second point. This concerns the evidence that there is of “parallel trading”, that is to say evidence that goods have been traded for a significant period of time under the two marks in the same market without there being any evidence of any confusion between them by any members of the public. The overall evidence before the Hearing Officer, which he does not appear to in any way to have doubted, was there had been parallel trading in the UK market under the two marks since about the year 1995. In each of the years from then until the date of the application the Opponent’s turnover under its mark was about £1 million per annum. As already observed the Applicant’s turnover under its mark was significantly larger. Mr Vratsidas for the Opponent in his Witness Statement made on 21st December 2000 described the products sold under the FIORUCCI trade mark as consisting of “clothing and other fashion accessories such as sunglasses, bags, jewellery, stationery and watches”. Mr Jones, in another Witness Statement put in on behalf of the Opponent to which I have already made reference, stated that he associated the FIORUCCI trade mark “with a wide range of products from fashion, household and beauty to accessories including shoes and bags”. The evidence on behalf of the Applicant, which was not challenged, was in substance to the effect that essentially the market in which products under both marks are traded is a single market consisting of designer clothes and accessories. If one regards the market in that way, it is plain, it seems to me, that there was indeed significant “parallel trading” under the two marks in the same market for very many years before the date of the applications.[37]The Hearing Officer accepted, correctly in my judgment, that where “two marks can be shown to have co-existed in the market place, parallel use of the two marks can be a factor to take into account in a global appreciation under Section 5(2)”. However, he specifically refused to take this factor into account at all in this case because, breaking down the relevant market into, in essence, separate markets restricted to the classes of goods to which the respective applications for registration related, he found that there had been no or little parallel trading in this sense in the same market to take into account. He thus concluded, as already observed, that he did not find that the “absence of any evidence of actual confusion in the market place” was a relevant factor in this case.[38]In my judgment, this was a significant, distinct and material error of principle on the part of the Hearing Officer. The various classes of goods and services defined for the purposes of applications for registration of trade marks have nothing whatever to do with the true market in which the goods to which the trade marks are attached are being traded. If it is correct, as it seems to me to have been on the unchallenged evidence before the Hearing Officer, that there is essentially here a single market for designer clothes and accessories, and that the two marks had for many years been used in that market simultaneously, the fact that there was no evidence whatsoever of any actual confusion in the market place must be, as I see it, a relevant factor. The Hearing Officer refused to take this into account at all. Taking the application to register the trade mark in respect of Class 25 (clothing) he took the view that before he could take parallel trading into account, he would have required evidence of prolonged use of the FIORELLI brand on clothing. Even on that basis, he can be criticised because there was significant and unchallenged evidence before him that the FIORELLI brand been used for some 4 to 5 years on clothing. However, whatever the position in that regard may be, it seems to me, that the Hearing Officer has, with great respect, missed the point. The relevance of parallel trading is not whether there happens to have been parallel trading in the particular class of goods for which the application to register the trade mark has been made. Rather it is the fact that if in a market which consists of designer clothes and accessories there has been parallel trading for very many years without any actual evidence of confusion in that market, that is in itself a factor to be taken into account when considering the risk of confusion between the two marks. Indeed, on the basis that “the proof of the pudding is in the eating”, it might in certain circumstances be regarded as a decisive factor, particularly when the similarity between the two marks is not all that great.[39]Not only did the Hearing Officer, in my judgment wrongly refuse to take into account the absence of any actual confusion in the market place, it seems to me that in this regard he has misunderstood the importance of the evidence filed on behalf of the Applicant to which he makes reference in paragraph 65. This is the evidence of various persons who hold varying degrees of prominence in the designer fashion market. The Registrar was, in my judgment, quite correct to ignore the expression of their views as to the likelihood of confusion between the two marks. That is a matter for the Tribunal and not for them. However, the importance, as I see it, of their evidence is that, although all of them are and were at the material times “close” to the market, none of them had heard of any confusion being expressed in the market between the two marks. Indeed, some of them had never even heard of the FIORUCCI mark. But they could be expected to have at least heard of that mark if, in the market in which they were very close, they had seen evidence of some confusion on the part of members of the public between the two marks. Conclusion on the Appeals[40]It seems to me, accordingly, that the Hearing Officer in this case, despite what are otherwise meticulous determinations on his part, did fall into a decisive and material error of principle which justifies an appellate court in interfering with and reviewing his determinations. In my judgment, the evidence of parallel trading in the two marks in what was substantially the same market is a highly important factor which the Hearing Officer should have taken into account. Had he taken that into account, it seems to me that the conclusion which he would have reached, and certainly that is the conclusion which I reach reviewing his decision, is that there is not such similarity between the two marks as to give rise to a likelihood of confusion on the part of the public within the meaning of the Section.[41]There are, undoubtedly, certain similarities between the two marks. But they are not, in my judgment, particularly large. The Hearing Officer himself thought, and I agree, that the aural similarity was not particularly high given their aural dissimilarity. Furthermore the aural similarity, such as it is, is not, and again I agree with the Hearing Officer, in a case like this particularly important given that the goods in question in respect of both applications would be primarily chosen by the eye. The conceptual similarity is there but pretty meaningless given the large number of Italian sounding designer trade marks that there are in this particular market. There is some visual similarity undoubtedly between the two marks. However, if one strips out of consideration the Registrar’s erroneous thought that, as the similarity of these two marks occurs at the beginning of the mark, that is more likely to come to the attention of the average consumer, the similarity, to my mind, is not particularly large. The second part of the mark is plainly quite different in visual appearance from the first part. I would expect the average consumer in this sort of market to notice and remember the difference even accepting, as I do, that the consumer is unlikely to be able to view the marks side by side – and will only have, when viewing one mark, perhaps an imperfect memory of the other one.[42]However, it seems to me that it is at this point that the fact of parallel trading for many years in the market without any evidence of confusion becomes decisive. Absent that, one might have thought that there was at least a possibility of members of the public being confused by the visual similarity between the two marks, such as it was. Even then I have my doubts whether for my own part I could come to the conclusion that there was, in the words of the statute, a “likelihood” of such confusion. When one takes into account, as the Hearing Officer expressly did not, the absence of any actual evidence of confusion in the market between the two marks, notwithstanding parallel trading in it for many years, it seems to me the matter is now all one way. In the light of that evidence it does not seem to me that it can possibly be said that there is a likelihood of there being confusion between the two marks on the part of the public within the meaning of Section 5(2)(b) of the Act.[43]Accordingly, I would allow these two appeals and set aside the refusal of the Registrar to register the trade mark FIORELLI in the respective classes for which application has been made.