September 2, 2016
Tripadvisor LLC v Handsam Limited
Tripadvisor LLC v Handsam Limited
TripAdvisor opposed the UK trade mark application HANDSAM SCHOOL TRIP ADVISOR (stylised), based on their own stylised TRIPADVISOR mark. This opposition was only partially successful, with many key specifications allowed to remain in the application. Notably, the opposition failed with regards to all specifications which directly referenced Education. The Hearing Officer found that where the Handsam specification referenced Education specifically, there would not be any likelihood of confusion, passing off, and the Applicant was not, without due cause, taking unfair advantage of, or being detrimental to, the distinctive character or the repute of the earlier trade mark.   TripAdvisor brought an appeal before the High Court, the decision of which has recently been handed down. TripAdvisor (the Opponent) claimed that the Hearing Officer had erred in his judgement in finding the Opposition successful only in relation to certain goods and services. The Opponent claimed this to be a result of the Hearing Officer having failed to undertake a global assessment of the two marks and in doing so had misapplied the relevant case law. Neither of these assertions found favour with Mr Justice Warren, who agreed with the Hearing Officer on both accounts. Throughout the decision, Mr Justice Warren reminds the Opponent that he was reticent to “interfere with a trial judge’s decision”, where there is not a clear and material mistake of law. This decision serves as a reminder, then, that the appellate courts of the UK will not disturb a decision of the Registry in the absence of a distinct and material error of principle. To take this a step further, one is reminded that where an appeal is based on an error of law, one must focus purely on the legally substantive elements of the case. Where the outcome of the appealed decision is cited as evidence for an error, it is all too easy to slip into discussing the facts of the case, which are necessarily immaterial in such an appeal.
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Trademarks /  Travel /  Disputes

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