This recent UK appeal to the Appointed Person is a useful reminder that when a decision is plainly wrong on the facts, it is well worth filing an appeal.
It's not often that we appeal a decision on this basis. It's more usual to look for an error of law or principle in the original decision, and we can feel that without these errors an appeal is on shaky ground. Here, Iain Purvis QC as Appointed Person found the Hearing Officer to have applied the right principles, but to have applied them badly throughout the decision.
The case concerned a UK Opposition decision that refused registration of MULTIBUS on the basis of Volkswagen's prior registration for MULTIVAN, both covering a range of vehicles in class 12.
The first instance Hearing Officer was found to have reached an unreasonable decision on the facts, in almost every aspect. The extent of use attributed to Volkswagen's MULITVAN mark was exaggerated beyond what the evidence showed. The degree of distinctive character attributed to the earlier mark should have been at the lowest end of the spectrum of distinctiveness within which valid trade marks may exist, but was instead assumed to be of an average degree. And the degree of care and circumspection of the average consumer was underestimated.
As an aside, we are also given a useful evaluation of what is meant by circumspection, a word often flung into an argument without much analysis and yet it plays a part in the well-established definition of the average consumer in the assessment of likelihood of confusion. The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect. In the appeal, the Appointed Person stated: 'Circumspection includes not leaping to conclusions which are not justified by the known facts and taking reasonable precautions (bearing in mind the nature of the goods and the importance of the purchase) to resolve uncertainties'. It will be interesting to see whether this definition beds into the trade mark lexicon. Many decisions deal with the level of attention of the average consumer, but not specifically with circumspection.
Another mistake from the Hearing Officer was the conflation of the principle of indirect confusion (where a consumer does not confuse one brand with another but assumes brands are linked because of similarities between them) with practice on families of marks (where a likelihood of confusion arises from the possibility that consumers will believe the contested mark is part of a family of marks bearing a particular similarity). The Hearing Officer made an unjustified leap in finding that the common MULTI element would cause indirect confusion, despite there being no family of MULTI marks owned or used by Volkswagen.
It's hard to argue with the Appointed Person's conclusions. At Stobbs we do sometimes receive a decision that is plainly wrong, because a hearing officer is only human and ultimately the decision will be subjective. It's good to see an Appointed Person prepared to undo bad decisions.
Trademarks / Automotive / Disputes
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