SC Prodal 94 SRL v Spirits International NV

This is an appeal from the decision of the Hearing Officer, sitting for the Comptroller General of Patents, Trade Marks and Designs, dated 23 April 2003 by which he upheld an opposition to the registration of two trade marks.

The applicant for the trade marks, the appellant before me, is SC Prodal 94 SRL. The two trade marks consist of labels to be attached to bottles of vodka in which one of the most distinctive features is the word STALINSKAYA. The opposition was brought by Spirits International NV. Reliance was placed, in particular, upon section 5(2)(b) of the Trade Marks Act 1994, it being said that the marks applied for were similar to a number of prior registered marks, all being marks in which were prominently utilised the well-known trade mark STOLICHNAYA.

Mr.  Burkill QC, who appears on behalf of the appellant/applicant accepts that the Hearing Officer correctly set out the factors which he had to take into account in deciding this opposition. Those are set out in paragraph 26 of the decision in which he says the following:

“(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors; Sabel BV v. Puma AG, page 224;

(b)

the matter must be judged through the eyes of the average consumer of the goods/services in question; Sabel BV v. Puma AG, page 224, who is deemed to be reasonably well informed and reasonably circumspect and observant -- but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind; Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV page 84;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; Sabel BV v. Puma AG, page 224;

(d)

the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components; Sabel BV v. Puma AG, page 224;

(e)

a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa; Canon Kabushiki Kaisha v. Metro-Goldwyn-Meyer Inc., page 132;

(f)

there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it; Sabel BV v. Puma AG, paragraph 224;

(g)

mere association, in the sense that the later mark brings the earlier marks to mind, is not sufficient for the purpose of section 5(2); Sabel BV v. Puma AG, page 224; and

(h)

but if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section; Canon Kabushiki Kaisha v. Metro-Goldwyn-Meyer Inc.,page 134.”

Those were the principles which he said he was to apply to deciding whether the objection under section 5(2)(b) was being made out. In particular it should be remembered that under that section:

“A trade mark shall not be registered if because

....

(b)

it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those of which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes a likelihood of association with the earlier trade mark.”

So, as I have said, Mr.  Burkill accepts that the principles which the Hearing Officer had to apply in deciding whether or not there was sufficient likelihood of confusion to trigger the operation of section 5(2)(b) were accurately recorded in the decision under appeal. The argument is that having set out the correct tests or considerations which had to be borne in mind, the Hearing Officer failed to do that properly.

Before turning to the decision I think it is useful to have in mind the decision of the Court of Appeal in REEF Trade Mark[2003] RPC page 101 in which the court considered what the function of an appellate tribunal was in, amongst other things, appeals from the Trade Mark Registry. As Robert Walker LJ said in that case, an appeal from the Trade Mark Registry is not a rehearing. Because of that, particular respect must be given to the conclusions arrived at by the first instance tribunal. The appellate court should be wary of making different findings of fact on the same evidence and the appellate court has to take into account the undoubted expertise of those conducting trade mark hearings in the Registry. Thus (to use the words used in REEF) there should be a real reluctance “to interfere in the absence of a distinct and material error of principle”.

Furthermore, I think it is worth noting that Robert Walker LJ said that “the Hearing Officer was not obliged to disown all his knowledge of the day-to-day world in which we all live” and he further decried the practice of sifting through exhibits, which had not been the subject of cross-examination, to pick up scraps of information about the status of the market and to accord them much greater value than they bear on their face.

The Hearing Officer took note of the factors which he had identified as being the relevant factors to consider in determining whether section 5(2)(b) operated in this case and in his decision he goes through each of those factors explaining how he assesses them. As I understand it, Mr.  Burkill suggests that there were three major respects in which he erred. First, he says that the Hearing Officer failed to give due, or any, consideration to the existence of other Russian-sounding vodkas which had nothing to do with the opponent, the argument being that this was a very full field in which there were many such Russian-sounding products and that therefore, presumably, a degree of discrimination on behalf of the average customer was to be expected. Second. he says that insufficient attention was given to the existence of other registrations for similar goods which consisted of registrations of Russian-sounding names. Third, he says that the Hearing Officer wrongly assessed the conceptual similarities between the marks applied for and the registered marks of the opponent used to support the section 5(2)(b) attack.

In considering these points I think it is also useful to bear in mind the warning against an over-meticulous analysis of judgments at first instance. In all cases it is necessary to consider what the judge or tribunal at first instance intended. As Robert Walker LJ put it in REEF decision:

“29.

The appellate court should not treat a judgment or written decision as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed. The duty to give reasons must not be turned into an intolerable burden. (See the recent judgment of this court in English v. Emery Reimbold & Strick Ltd (and two other appeals heard with it) [2002] EWCA Civ. 605 April 30th 2002 …”

Let me then turn to the major objections raised by Mr.  Burkill. He complains about the wrong assessment of the conceptual similarities between the marks. This criticism really is directed at paragraph 37 of the Decision which reads as follows:

“Next, I turn to a conceptual comparison of the marks. In the UK the marks would be perceived primarily as invented words. As Ms Heal points out, the dominant part of the mark in suit, the word STALINSKAYA, contains the element STALIN which could remind customers of the deceased dictator. However, conceptual similarity exists in that the respective marks both have a Russian or East-European feel or impact. It seems to me that the invented words sharing a Russian or East-European identity are not likely to be distinguished in the way dictionary words with similar appearances but differing meanings would be and imperfect recollection may well be a factor.”

Based upon this Mr. Burkill suggests that the Hearing Officer had, in essence, decided that the marks were conceptually the same because they were Russian. It is for this reason that he says the Hearing Officer was in error in not making reference to other Russian-sounding names used in relation to vodka and other Russian-sounding names registered in respect of that product. In other words this covers his first and second objections to the Decision.

In my view this is based upon a misconception of what the Hearing Officer was saying in paragraph 37. It seems to me that all that the Hearing Officer was saying was that these words, that is to say, STALINSKAYA and STOLICHNAYA, would be regarded by most members of the public in this country as invented words, that is to say words having no particular meaning. As such, they would not look for or notice, in many cases at any rate, the existence of the word “Stalin” in the appellant’s mark. These would simply be invented words. Hence his reference in the last sentence of the paragraph which I have cited above to the difference between the way the public would consider Russian or Eastern European words compared with the way they would consider dictionary words with similar appearances but differing meanings. He was minded to treat these two marks as if they consisted of foreign-sounding words with unknown meanings.

As such, it seems to me, that he was perfectly entitled to look at the two and to come to the conclusion that for many people the existence of the letters S-T-A-L-I-N at the beginning of the appellant’s mark would not jump out, as Mr.  Burkill says they would, and immediately give rise to a reference to the former leader of the Soviet Union. For what it is worth, I think it is only fair to point out that when I first saw this case and before I had read either the decision or the skeleton arguments, the fact that the appellant’s mark started with the name STALIN was something which I did not notice.

Second, Mr.  Burkill complains about paragraph 35 of the decision which reads as follows:

“I now turn to a visual comparison of the respective marks. The dominant, distinctive element of the mark in suit is the word STALINSKAYA which, as the opponent points out, is of the same length as the opponent’s STOLICHNAYA mark (eleven letters), and both commence with the letters ST, share the same fourth and fifth letters and end with the letters AYA. The words differ in their third, sixth, seventh and eighth letters and the marks also differ in that (as mentioned in paragraph 31 of this decision) the mark in suit comprises a label containing additional material, namely product descriptors and product information. As mentioned earlier in this decision, similarity of marks must be considered in the light of the overall impression. On this basis, given that the word STALINSKAYA is the dominant, distinctive element of the applicant’s mark and that the differing letters are in the middle of the respective words, where their visual impact is relatively less apparent than it is at the beginning and termination of the words, and after bearing in mind the potential for imperfect recollection, it seems to me that the respective marks as a whole possess obvious visual similarity and there is considerable scope for visual confusion, notwithstanding that the STALIN element of the word STALINSKAYA may remind some customers of the deceased Russian dictator.”

Mr.  Burkill says that this passage is defective partly because it appears that the Hearing Officer was engaging in a numerical exercise of counting the number of letters in the two marks and comparing them on that basis and partly because he did not take into account the fact, as Mr.  Burkill asserts it to be, that STOLICHNAYA is promoted to members of the public in the United Kingdom in an abbreviated form of STOLI.

Once again, I have to bear in mind that I am not asked to consider whether I would have expressed a decision in the way that the hearing officer expressed it. Nor is it appropriate to go through this decision paragraph by paragraph pulling individual sentences or words to pieces. That may sound like a subtle form of criticism of the decision. It is not meant to be so.

In my view, the decision is clear and in my view well reasoned. The objections taken to paragraph 35, in my opinion, are misplaced. All that the Hearing Officer was doing -- in my view, correctly -- was to try and assess what the impact of these two marks would be bearing in mind imperfect recollection. The fact that they were the same length is not a matter which gave rise to his conclusion that they were confusingly similar; it is the overall structure of the words which he decided gave rise to visual similarity. The words look of similar length, they start the same way and they end the same way. And, as he said in the middle of the paragraph I have cited, the differences are in the middle of the respective words where their visual impact is relatively less apparent than it is at either end.

In my view this was a conclusion which it was clearly open to him to come to and is a fair assessment of the visual similarity of the marks.

It is not the duty of this court to overturn a decision of the Trade Mark Registry simply because it comes to the conclusion that it might have decided the case differently had it, that is to say the High Court, been the court of first instance. It has to be demonstrated that the decision at first instance was wrong in a material way; that is to say there must be some significant departure from a proper assessment of the law or the facts.

In my view no such criticism can be levelled at this decision. Indeed, if I were to replace my judgment for that of the Hearing Officer, there is only one paragraph in the decision with which I would take any significant exception. That is paragraph 36 which reads as follows:

“In relation to aural use of the marks, it seems to me that the mark in suit is likely to be referred to in general use by the word element STALINSKAYA only. While the marks share similar beginnings and identical terminations and aural similarity exists, I believe the opponent’s case for aural similarity to be less strong than the visual one.”

In my view, had this been a case where I had been deciding the matter at first instance, I am not sure that I would have said that the aural similarity is less strong than the visual one. In my view, it is as strong as the visual one and therefore, if anything, I would have come to the same conclusion as the Hearing Officer but perhaps I would have also done so on the basis of the aural similarity as well.

In my view the appeal fails.