Extreme Networks Ltd v Extreme E Ltd

Factual and Procedural Background

On 31 May 2019, Company A filed an application to register a device as a United Kingdom Trade Mark covering multiple classes, including Classes 41 and 43. On 10 September 2019, Company B filed an opposition to this application concerning Classes 41 and 43, relying on section 5(2)(b) of the Trade Marks Act 1994, alleging a likelihood of confusion with its earlier European Union Trade Mark registered in Classes 41 and 43. The opposition remained unaffected by the UK's departure from the EU, with the earlier mark replaced by a comparable UK Trade Mark.

No evidence was filed by either party. Following a hearing on 31 May 2023, the hearing officer issued a decision on 21 August 2023 holding that there was a likelihood of confusion for some services in Class 41 and all services in Class 43, resulting in the opposition succeeding for those services. The opposition failed for the remainder of the services in Class 41.

Company A appealed to the High Court on six grounds, challenging the hearing officer's finding of similarity for certain services in Class 41. The appeal was heard on 7 February 2024, and judgment was given on 12 February 2024 allowing the appeal on the first ground but dismissing the others. This outcome meant the opposition failed for additional services in Class 41.

Company B was granted permission for a second appeal on points of principle regarding the assessment of similarity of services and appellate review of hearing officer decisions.

Legal Issues Presented

1. Whether the hearing officer erred in holding that certain services in Class 41 of Company A's application were similar to the service specified in Company B's earlier mark ("booking of seats for shows").
2. The correct approach to assessing similarity of services under section 5(2)(b) of the Trade Marks Act 1994, including the application of established legal principles and precedent.
3. The appropriate standard of appellate review for decisions of the Trade Marks Registry on similarity and likelihood of confusion.

Arguments of the Parties

Appellant's Arguments

• The hearing officer incorrectly interpreted "booking of seats for shows" to include booking for third-party events, whereas organisers only book seats for their own events.
• The sale of tickets by organisers is incidental to their core business of organising events, thus the services should not be considered complementary or similar.
• Sporting events are not "shows" in the sense relevant to the earlier mark, and such events do not necessarily involve bookable seating, undermining similarity.

Respondent's Arguments

• The earlier mark's "booking of seats for shows" refers to a ticket agency service booking seats for third-party shows.
• The hearing officer correctly found an overlap of users and that the services were complementary, as booking seats is closely connected to organising shows.
• Sporting and motor vehicle events can be considered shows for which seats are generally available and bookable, supporting similarity.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1998] ECR I-5507	Principles for assessing similarity of goods or services considering nature, purpose, method of use, competition, and complementarity.	Applied to assess similarity of services between the marks, emphasizing multifactorial evaluation.
eSure Insurance Ltd v Direct Line Insurance plc [2008] EWCA Civ 842	Similarity spectrum: no similarity means no likelihood of confusion; some similarity requires consideration of confusion.	Reinforced that similarity is a threshold question before likelihood of confusion is assessed.
Avnet Inc v Isoact Ltd [1998] FSR 16	Correct approach to interpretation of specifications of goods and services.	Guided the court's interpretation that organisers of events sell tickets for their own events, not third-party events.
Magmatic Ltd v PMS International Group plc [2016] UKSC 12	Standard of appellate review for specialist tribunals: intervention only for legal error or identifiable flaw.	Supported the principle that appellate courts should respect hearing officer decisions absent clear legal error.
Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15	Appellate review principles for factual and evaluative decisions.	Confirmed the need for identifiable flaws to justify appellate intervention in similarity assessments.
Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8	Reiterated judicial restraint and deference to specialist tribunals' fact-finding.	Applied to uphold hearing officer's multifactorial evaluation absent misdirection or logical gaps.
HA (Iraq) v Secretary of State for the Home Department [2022] UKSC 22	Judicial caution in setting aside specialist tribunal decisions; respect for tribunal's fact-finding.	Supported approach to compressed reasoning by hearing officers and appellate restraint.

Court's Reasoning and Analysis

The court began by affirming the established legal framework governing opposition based on likelihood of confusion under section 5(2)(b) of the Trade Marks Act 1994, aligned with relevant EU directives and CJEU jurisprudence. The principles require a global appreciation of likelihood of confusion considering the average consumer's perspective and the overall impression of the marks and their goods or services.

Regarding similarity of services, the court applied the multifactorial test from Canon and subsequent cases, considering nature, purpose, method of use, users, trade channels, and whether the services are complementary or competitive.

The hearing officer had found that certain cultural and sporting services in the application were similar to the earlier mark's "booking of seats for shows," largely on grounds of overlapping users and complementarity, including that organisers also provide booking services for their own events.

The judge in the High Court accepted the appellant's argument that organisers only sell tickets for their own events and do not act as ticket agencies for third-party events. He held that the hearing officer erred in treating a mere incidental ticket sale as sufficient to establish similarity, concluding that the relevant services were dissimilar.

On further appeal, the court disagreed with the judge's narrower interpretation. It held that the hearing officer's reasoning was tenable and that a service of booking seats for shows is closely connected to the organisation of shows, even if ticket sales are incidental to the organiser's core business. The court emphasized that the distinction between core and incidental services is of limited relevance to similarity assessment, which focuses on the overall connection between services.

Regarding sporting events, the court disagreed with the judge's view that such events are not "shows" and noted that most sporting events involve bookable seating, supporting similarity.

The court reiterated the standard of appellate review, stressing the need for identifiable legal error or logical flaw before overturning the hearing officer's findings, especially given the compressed nature of reasoning in trade mark decisions and the absence of evidence from the parties.

Ultimately, the court found no error of principle in the hearing officer's assessment of similarity and reinstated her decision.

Holding and Implications

The court's final decision was to ALLOW THE APPEAL and reinstate the hearing officer's decision that there is a likelihood of confusion between the marks for certain services in Class 41 and all services in Class 43.

This means the opposition by Company B succeeds in relation to those services, and Company A's application is refused accordingly. No new precedent was established; the decision reaffirms the established multifactorial approach to similarity and appellate review in trade mark opposition cases.