Last month, University College London (“UCL”) hosted their annual “Question the Trade Mark Judges” event in which representatives from the UKIPO (Allan James), EUIPO (Virginia Melgar) and the High Court (The Honourable Mr Justice Mellor KC – High Court and Douglas Campbell KC - Deputy High Court Judge) took questions posed by the public on various trade mark topics, including: post-sale confusion; the relationship between famous names and likelihood of confusion; defining the relevant consumer; and social media evidence in trade mark proceedings. 

Post-sale confusion

The first question concerned post-sale confusion and whether it is important that it be considered by the intellectual property offices and the courts. Post-sale confusion exists when use of a trade mark by someone other than the trade mark holder leads individuals (other than the purchaser of a product) to believe mistakenly that the product bearing the mark was manufactured by the trade mark holder.

The panel’s UKIPO representative, Mr Allan James, explained that an assessment of post-sale confusion comes down to the level of attention attributed to the relevant consumer when considering whether there is likely to be confusion. It was Mr James’s view that the correct point in time at which to determine the level of attention to be applied is at the “point of selection [of a product]” and that the same level of attention should be applied later in the process, including when assessing whether there has been post-sale confusion. It would not be correct to attach a lower level of attention to the assessment at later points in time. James explained that the danger with lowering the level of attention when considering post-sale confusion is that this can lead to parties putting forth speculative arguments such as those involving people rushing around a supermarket and mistakenly picking up a different item to that which they meant to purchase, or people claiming that it is not possible for a spectator sat at the back of a football stand to view how many stripes a player is wearing on their boots (an example from a real case fondly recounted by Mr James when making this point).

The relationship between famous names and likelihood of confusion

Another question put to the panel was why it is the case that when the holders of famous names or marks challenge the holders of later marks which are objectively similar (on the grounds of a likelihood of confusion), trade mark offices are finding in favour of the later rights holder. 

The two recent cases which spring to mind when this topic comes up are those of Picasso v Picaro[1] and MESSI v MASSI[2]. James explained that these cases concerned names which are “famous beyond the brand” (i.e. artist Pablo Picasso and footballer Lionel Messi). James cited another recent case handled by the UKIPO concerning the earlier mark REBELLION and later mark EXTINCTION REBELLION.[3] James and the UKIPO concluded in this case that nobody is likely to be confused by these two marks due to the clear conceptual differences between them. However, James explained that a heated debate ensued among UKIPO examiners as to whether the UKIPO were dumbing down the distinctiveness of the earlier mark by just looking at the conceptual differences between the two marks. James concluded that this would not be the case here because the marks had meaning beyond the trade marks themselves. However, James explained that had the UKIPO handled a case involving e.g. “Intel” and “Intelo”, it would not be correct to come to the same conclusion on the basis that Intel is a well-known brand and that Intelo doesn't have the same conceptual meaning. So, a likelihood of confusion would probably be found in this case. 

Ms Virginia Melgar of the EUIPO explained that the topic of whether names have conceptual meaning has been handled rather contradictorily by the EUIPO in recent years, with some examiners taking the view that there is no concept in a name and others concluding that there is. Ultimately, though, Ms Melgar explained that the EUIPO is taking the view that in the case of very famous names (such as in the Picasso and Messi cases) there will be no finding of a likelihood of confusion.

Is there a problem with defining the relevant consumer?

Another issue considered by the panel was that of defining the “relevant consumer” in trade mark prosecution and litigation cases, and whether there is a problem with this. James explained that when it comes to defining the relevant consumer, trade mark applicants tend to focus narrowly when looking to show acquired distinctiveness because it gives them a small pool in which they need to show reputation. Whereas, when trying to show unfair advantage, applicants are more inclined to cast the pool more broadly. James takes the view that parties simply cannot have it both ways.

James cited the London Taxi case[4] in which the London Taxi Corporation Limited relied on a narrow interpretation of the relevant consumer, defining the relevant consumer as taxi firms. However, on appeal, the Court of Appeal concluded that consumers (i.e. the end users of taxi services) should have also been considered within the definition of the relevant consumer, making it more difficult for the London Taxi Corporation Limited to show acquired distinctiveness in that case.

In a later case (which involved oppositions to trade mark applications for the shapes of four-wheel drive vehicles filed by the applicant), the applicant took on board the decision in the London Taxi case on how to define the relevant consumer and decided to conduct a survey aimed at a broad range of consumers with the hope that the results would show that the shape marks had acquired distinctiveness in the minds of the respondents. However, the results of these surveys failed to show that a substantial proportion of relevant consumers “had come to perceive the shapes as an indication of origin, rather than merely recognising them and associating them with [the applicant]”.  Had the applicant narrowed the pool of survey respondents to consumers in the market for four-by-four vehicles, one would expect the results to have been much more favourable to the applicant’s case for acquired distinctiveness.

These cases demonstrate the importance of applicants carefully considering who is the relevant consumer when showing acquired distinctiveness.

Social media and user generated content - has it helped us get a better idea of consumer perceptions?

Finally, the panel considered whether the use of social media and user generated content as evidence in trade mark prosecution proceedings is helpful in understanding consumer perceptions of particular brands. 

Mr James explained that, nowadays, reviewing social media evidence consisting of, for example, the number of followers of a particular party and screen shots of social media posts, is a routine part of the evidence review conducted by UKIPO examiners. James explained that such evidence can be helpful in demonstrating when particular marks were first used by the relevant party and that the nature of social media posts included in evidence can go some way to demonstrating consumers’ perception of the brand in question. However, James emphasised the importance of such evidence being considered in context. This is particularly the case for follower numbers which can otherwise be misleading. For example, a certain number of followers may be considered high for a party in one industry but not another. Furthermore, follower numbers on social media do not break down those followers by geographical location, which makes it difficult to use such figures to demonstrate consumer engagement with a particular brand in the jurisdiction(s) relevant to the proceedings at hand.  

Ms Melgar also cited the “Salt Bae” case[5] in which an application for the motion mark was refused for goods and services in Class 25, 30 and 43 for clothing, food and services for providing of food and drink on the grounds that it did not meet the requirements for trade mark registration in the EU:

The applicant argued that the application should have been allowed on the basis that the sign went viral in 2017 and was viewed 10 million times on Instagram, but this social media evidence did not convince the EUIPO’s Fifth Board of Appeal.

So, while social media evidence can assist brands in their submissions before national trade mark offices, brands should exercise caution in relying entirely on such evidence when making their case. 

Elinor Cavil is an Associate specialising in Trade Marks, Copyright, Designs and Advertising matters. Should you have queries regarding any of the topics mentioned in this article, you can contact Elinor at elinor.cavil@dlapiper.com

[1] Case C-361/04 P

[2] Joined Cases C‑449/18 P and C‑474/18 P

[3] Opposition no. 419124

[4] London Taxi Corporation Limited v Frazer-Nash Research Limited and Anor [2017] EWCA Civ 1729

[5] Case R 2661/2017-5