In a recent case, E.ON SE was unsuccessful in their appeal to the Appointed Person against the opposition decision reached in connection to the UK designation for in classes 9, 35, 36 and 39 in the name of EonX Services Pty Ltd. 

Background 

An opposition based on s.5(2)(b), 5(3) and 5(4)(a) of Trade Marks Act 1994 was filed against the mark by E.ON SE (“Appellant”). They relied on four earlier rights: 

•  in classes 35, 36 and 39 

• E.ON Connect in classes 9, 35, 36 and 39  

• E.ON Drive in classes 9, 35, 36 and 39. 

• E.ON NEXT in classes 9 and 39. 

The opposition was successful in connection to a few terms in classes 9 and 36. The appeal was filed in connection to the remaining goods and services. 

Decision  

Five grounds of appeal were raised. In order for any of the grounds to succeed, the Appointed Person had “to be satisfied that there was a distinct and material error of principle in the decision in question or that the Hearing Officer’s findings were rationally insupportable”.  

Grounds relied on 

Ground 1: When deciding the similarity between the class 9 goods covered by the earlier rights and the opposed mark, the Hearing Officer “relied blindly” on the witness statement evidence. 

This ground was dismissed, as it was found that the same conclusion would have been reached by the Hearing Officer without considering the evidence in question. Their similarity assessment differed from the assessment in the Witness Statement as well. 

 The Appellant added a subsidiary ground 1 to the skeleton argument. As this argument was not present in the grounds of appeal, it was not considered by the Appointed Person. 

Ground 2: The argument that the decision on direct confusion was “rationally insupportable” was rejected as well, as there was no indication that the Hearing Officer did not take into account/improperly weighed the elements pointed out by the Appellant. When considering the argument that insufficient consideration of the Appellant’s enhanced distinctiveness was taken, the Appointed Person referred to the decision of Henderson v Foxworth Investments Ltd [2014] UKSC 41 which stated that:     

“An appellate court is bound, unless there is compelling reason to the contrary, to assume that the trial judge has taken the whole of the evidence into his consideration”. 

Ground 3: incorrect decision was reached regarding indirect confusion.   

The key argument in connection to this ground revolved around the Hearing Officer’s decision that if the identical element between the marks is noticed by the consumer, they would think it is due to coincidence. The Appellant argued that this is not a correct assessment of direct confusion, as direct confusion does not include the “process of analysis or reasoning”. The Appointed Person looked at the relevant case law and concluded that “[d]irect confusion requires some mental process even if this goes no further than (imperfect) recall”. 

Ground 4: incorrect decision was reached when deciding whether there is link between the marks. 

Whilst the Appointed Person found that, contrary to the Hearing Officer’s decision, there was an overlap between the relevant consumers, it was also found that the overlap was not enough to find a link between the marks.  

Ground 5: The Hearing Officer should have considered if there would be injury, having found a link between the marks. It was found it is not always necessary to assess whether there would be injury if a link between the marks is found. Thus, the Hearing Officer stating that “despite the link existing, there would be no injury caused because the link would be dismissed as a coincidence” was found to be sufficient argument not to continue with this assessment.  

Summary

The arguments presented in an appeal have a high bar to meet to be successful. As is evident from the decision, a finding of error in the Hearing Officer’s decision is not enough, it needs to materially impact the conclusion reached. Finally, it is important to remember that arguments which are not present in the grounds of appeal will not be accepted later down the line.