Nicoventures Holdings Ltd v The London Vape Company Ltd

Factual and Procedural Background

This appeal arises from a decision by the Registrar of Trade Marks, upheld by CJ Bowen, rejecting the registration of a trade mark application by Company A due to opposition by Company B under section 5(2)(b) of the Trade Marks Act 1994. Company B's opposition was based on its earlier UK registered trade mark. Company A sought registration for electronic cigarettes and related goods and services in classes 34 and 35, while Company B's mark was registered for electronic cigarettes and related goods in class 34. The opposition was conducted under the Fast Track Opposition procedure, with Company A filing evidence concerning the descriptiveness of the word "VAPE" and the non-distinctiveness of "CO". Company B did not file evidence and the opposition was decided without a hearing, resulting in the opposition being upheld on the basis of a likelihood of confusion between the marks.

Legal Issues Presented

1. Whether the Hearing Officer erred in law by failing to properly consider the low distinctive character of the common elements ("VAPE" and "CO") shared by the competing trade marks when assessing likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994.
2. Whether the Hearing Officer correctly applied the principles governing the assessment of similarity and distinctive character in trade mark opposition proceedings.

Arguments of the Parties

Appellant's Arguments

• The Hearing Officer failed to give proper weight to the low distinctiveness of the common elements "VAPE" and "CO" in both marks.
• Given that "VAPE" is descriptive in the context of electronic cigarettes and "CO" is non-distinctive, the similarity between the marks should have been given less significance.
• If the marks were applied for goods unrelated to vaping, the similarity might have greater significance, but here the context reduces the likelihood of confusion.
• The Hearing Officer erred by not applying the principle from the case of Whyte and Mackay v Origin that similarity based solely on common elements with low distinctiveness generally does not give rise to a likelihood of confusion.

Respondent's Arguments

• The Hearing Officer's decision was legally sound and within the range of reasonable conclusions.
• The Hearing Officer was aware of the low distinctiveness of the common elements and properly considered this in his assessment.
• The appellant's legal submissions were incorrect in seeking to give undue prominence to distinctiveness at the expense of overall similarity.
• Relevant case law supports the conclusion that a weak distinctive character in the earlier mark does not preclude a likelihood of confusion.

Table of Precedents Cited

Court's Reasoning and Analysis

The court carefully reviewed the Hearing Officer's decision and identified an error of law relating to the assessment of the distinctive character of the common elements "VAPE" and "CO" shared by both marks. While the Hearing Officer recognized that these elements were descriptive and non-distinctive, he failed to properly apply the principle that similarity based solely on such common elements generally weighs against a finding of likelihood of confusion.

The court emphasized the importance of distinguishing between the overall distinctiveness of a mark and the distinctiveness of the shared components when assessing likelihood of confusion. It highlighted that the Hearing Officer did not adequately consider the low distinctiveness of the common elements during the key similarity analysis, particularly in paragraphs 41 and 42 of the original decision.

The court referred to established case law, including Whyte and Mackay v Origin, which holds that common elements with low distinctiveness do not normally create a likelihood of confusion. Although a weak distinctive character in an earlier mark does not automatically preclude confusion, it is a significant factor that must be weighed in the multifactorial assessment.

Applying these principles, the court found that the high degree of visual, aural, and conceptual similarity identified by the Hearing Officer stemmed from the descriptive and non-distinctive elements "VAPE" and "CO". Given the context of electronic cigarettes and the reasonably high degree of consumer attention, the differences in stylisation and overall impression reduce the likelihood of confusion.

Consequently, the court concluded that the Hearing Officer erred by not properly factoring in the low distinctiveness of the common elements, and that a re-assessment was necessary.

Holding and Implications

The court ALLOWED THE APPEAL and held that the opposition under section 5(2)(b) of the Trade Marks Act 1994 should be dismissed.

This decision directly affects the parties by permitting Company A's trade mark application to proceed, reversing the earlier opposition decision. The court did not establish any new precedent but clarified the application of existing principles regarding the impact of low distinctiveness common elements on likelihood of confusion assessments in trade mark cases.