The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 10 April 2017

Overturning a trade mark opposition decision - Part 2 - SOULUXE - likelihood of confusion

The soul survivor?
A mere four days after Arnold J's IWATCH decision (see here), Mann J handed down his decision in another appeal from the hearing officer.  This time the dispute centred on likelihood of confusion.

SOULUXE - SoulCycle Inc v Matalan Ltd

Matalan sought to register the SOULUXE device for various goods and services including clothing in Class 25. SoulCycle, the New York based spinning empire, opposed the application on the basis of its EU word mark SOUL.

It was accepted that the goods were the same so the debate centred on the similarity of the marks. SoulCycle argued that when the Hearing Officer dismissed their opposition, he had failed to pay sufficient attention to the prominence of the word "SOUL" in SOULUXE.

Soul similar?

When assessing similarity, the hearing officer started by comparing the marks visually. He noted that (i) "soul" is the first and more dominant element of the mark but (ii) the additional letters "uxe" and shaded circles "play a significant part in limiting the degree of similarity that the average consumer will observe."

Therefore there was a low degree of visual similarity.  This was uncontroversial.

SOUL-UCKS or SO-LUCKS?

There were two ways of skinning the aural cat.  Both had a medium degree of aural similarity (although the first pronunciation is slightly higher).

Conceptual similarit(ies)

The hearing officer considered that there were two types of average consumer: (i) those who would see SOULUXE as an invented word; and (ii) those who would break the mark down into two combined elements (such as DELIVEROO - deliver + roo or VAPOURUB - vapour + rub).  This meant that one type of average consumer would view SOULUXE as soul + luxe (indicating luxury).

As he put it "this is the type of case where there is no binary answer".

Likelihood of confusion?

This depended on the two types of consumer.  For those who do not see the word "soul" there was no likelihood of confusion.  Even if consumers saw the word "soul" it was asking too much to suggest that they would be confused.  In reaching this conclusion he noted that (i) the SOUL in SOULUXE does not perform an independent and distinctive role; and (ii) SOULUXE does not indicate a variant brand of SOUL.  Therefore even where there are identical or highly similar goods, the hearing officer concluded that there was no likelihood of confusion.

Can you have more than one average consumer?

The criticism of the hearing officer's decision centred on whether it was permissible to consider more than one type of average consumer in validity proceedings.  This careful distinction was because in Hearst Holdings v AVELA (aka the Betty Boop case, an infringement case) Birss J identified three classes of average consumers.  In that case, Birss J held that it was not necessary to find an average between two different average consumers but rather the question was - what was the perception of consumers "within any relevant class".

Could this approach apply to validity challenges?  Despite some valiant attempts from SoulCycle's counsel to argue the difference, Mann J concluded that there "is no logical reason" why not.  In addition, he explained that considering the question of the mark by reference to proportions within the class who did not share the same view, he was following the approach of Arnold J in Interflora [2013] EWHC 1291.  In that decision, Arnold J concluded that there is no single meaning rule for trade marks. As he concluded at [224] (and Mann J highlighted):
The fact that many consumers of whom the average consumer is representative would not be confused does not mean that the question whether there is a likelihood of confusion is to be answered in the negative if a significant number would be confused. 
Mann J considered this to justify the Hearing Officer's approach of considering confusion in relation to a proportion of the class of average consumer.  Although this approach was adopted only for conceptual confusion and not the question of confusion overall, Mann J did not consider this to a be a problem and noted that "conceptual similarity is a matter going directly to confusion, and it would be an odd analysis to require a single meaning type analysis here but not in the final conclusion" [30].

Had the "soul" group been correctly analysed?

Even if the two classes of average consumer was accepted, SoulCycle argued that it was wrong to treat the group who recognised the word "soul" in SOULUXE in two different ways.  Mann J gave this short shrift noting that the Hearing Officer had found (and was entitled to find) that the "soul" group did not have a uniformly high perception of conceptual similarity and he was entitled to reach this conclusion.

Despite repeated attacks, the Hearing Officer's decision once again remained in place and the opposition to the SOULUXE mark failed.

By Rosie Burbidge

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