Aveda Corporation v Dabur India Ltd

On 20 May 2010 Dabur India Ltd (“Dabur”) applied to register the trade mark DABUR UVEDA in respect of the following goods:

The application was subsequently opposed by Aveda Corporation (“Aveda”), primarily on grounds raised under section 5(2)(b) of the Trade Marks Act 1994 which implements Article 5(1)(b) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (“the Directive”).

Aveda relied upon three earlier registrations of the trade mark AVEDA:

Community Trade Mark No. 298117 filed on 14 June 1996 and registered on 7 May 1999 in respect of goods in Class 3;

UK Trade Mark No. 2218843 filed on 5 January 2000 and registered on 7 September 2001 in respect of goods and services in Classes 5, 30, 35, 41 and 44;

Community Trade Mark No. 4515854 filed on 27 July 2005 and registered on 7 August 2006 in respect of goods and services in Classes 4, 5, 18, 21, 26, 30, 32 and 41.

It will be appreciated that it is Aveda’s registrations in Classes 3 and 5 that are of most relevance to the opposition. It is not necessary for the purposes of this judgment to set out the Class 3 specification of the first registration in full, but it included “cleaning, polishing, scouring and abrasive preparations”.

Dabur required Aveda to prove use of the first two registrations. The third registration was too recent for proof of use to be required. At the hearing before the hearing officer, Aveda contended, and Dabur did not dispute, that it had proved use in relation to the following goods in Class 3 (emphasis added):

Curiously, Aveda also contended, and Dabur did not dispute, that it had proved use in relation to “scented candles” in Class 4 even though those goods were not covered by either of Aveda’s first two registrations.

Aveda accepted that it was unable to prove use in relation to goods in Class 5 extending beyond the Class 5 specification of the third registration, namely “dietary and nutrition supplements, vitamins”.

At the hearing, Aveda sought permission to adduce a further witness statement which it had served very shortly beforehand. The hearing officer Mark Bryant refused to grant permission on the ground that the evidence was “of minimal, if any, relevance”.

The hearing officer dismissed the opposition for reasons given in a written decision dated 22 August 2012 (O/318/12). Aveda has appealed against that decision. At the hearing of the appeal, however, Aveda only pursued the appeal in respect of certain goods covered by Dabur’s application. Aveda did not object to the application proceeding to registration in respect of the following goods (emphasis added):

The hearing officer’s decision may be summarised as follows. First, he set out the Trade Mark Registry’s standard summary of the principal decisions of the Court of Justice of the European Union concerning Article 5(1)(b) of the Directive or its equivalents, namely Case C-251/95SABEL BV v Puma AG [1997] ECR I-6191, Case C-39/97Canon Kabushiki Kaisha v Metro-Goldwyn-Meyer Inc [1998] ECR I-5507, Case C-342/97Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819, Case C-425/98Marca Mode CV v Adidas AG [2000] ECR I-4861, Case C-3/03 Matrazen Concord GmbH v Office for Harmonisation in the Internal Market [2004] ECR I-3657, Case C-120/04Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 and Case C-334/05Office for Harmonisation in the Internal Marketv Shaker de L. Laudato & C SAS [2007] ECR I-4529:

Secondly, he compared the respective goods, concluding that some of the goods in Dabur’s specification were identical to goods covered by Aveda’s specifications in respect of which use had been proved or was not required, some were either highly or reasonably similar and some were not similar. In this regard the following passages in the decision are of importance for the purposes of the appeal:

Thirdly, he considered the attributes of the relevant average consumer, saying in relation to the Class 3 goods at [40]:

Fourthly, he compared the respective marks. He noted that it was common ground that neither mark had any conceptual meaning. Comparing the marks as a whole, he concluded at [47] as follows:

Fifthly, he assessed the distinctive character of Aveda’s trade mark, finding that it had a “high level of inherent distinctive character”. He also accepted that there had been significant use of that mark in respect of beauty products and services, but due to the inherent distinctiveness of the mark he did not consider the resulting enhancement to the distinctive character decisive.

Finally, he assessed the likelihood of confusion. In this regard, he noted that Aveda contended, relying upon BULOVA ACCUTRON Trade Mark[1968] FSR 336 and Medion v Thomson, that UVEDA was confusingly similar to AVEDA and that the addition of DABUR did not prevent there from being a likelihood of confusion. He rejected this contention for reasons which he expressed at [57] as follows:

Aveda’s grounds of appeal can be summarised as follows:

the hearing officer failed correctly to apply Medion v Thomson;

the hearing officer was wrong not to admit the further evidence;

the hearing officer failed to apply the interdependency principle established by the jurisprudence of the CJEU;

the hearing officer incorrectly assessed the attributes of the average consumer;

the hearing officer erred in concluding that some of the respective goods were not similar.

It is common ground that the correct approach to an appeal of this kind is that stated by Robert Walker LJ (as he then was) in REEF Trade Mark[2002] EWCA Civ 763, [2003] RPC 5 at [28]:

Aveda’s first and most important ground of appeal is that the hearing officer failed correctly to apply the guidance of the CJEU in Medion. Before considering this in detail, I think it is worth making a preliminary observation. As I have recorded, the hearing officer directed himself by reference to the Registry’s standard summary of the principles established by the CJEU’s leading decisions. He cannot be criticised for doing so. I have used the summary myself in a number of judgments, and it was cited with approval by Kitchin LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ, [2012] FSR 19 at [52]. Nevertheless, it must not be forgotten that it is only a convenient summary. There are cases in which it is necessary to look in more detail at aspects of the CJEU’s jurisprudence. This is such a case.

In Medion v Thomson Medion was the owner of the German registered trade mark LIFE for leisure electronic devices. Thomson marketed such products under the sign THOMSON LIFE. Medion claimed that this was an infringement. The Landgericht (Regional Court) Düsseldorf dismissed the claim on the ground that there was no likelihood of confusion. The Oberlandesgericht (Higher Regional Court) Düsseldorf referred the following question to the Court of Justice:

In its referring judgment the Oberlandesgericht explained that, according to the case law of the Bundesgerichtshof (Federal Court of Justice), which was based on the “Prägetheorie” (theory of the impression conveyed), in order to appreciate the similarity of the signs in issue, it was necessary to consider the overall impression conveyed by each of the two signs and to ascertain whether the common component (there LIFE) characterised the composite sign (THOMSON LIFE) to the extent that the other component (THOMSON) was largely secondary to the overall impression. There would be no likelihood of confusion if the common component merely contributed to the overall impression of the composite sign. It did not matter whether the sign corresponding to the trade mark still had an independent distinctive role in the composite sign.

In answering the Oberlandesgericht’s question, the Court of Justice began by recapitulating the principles it had already laid down with regard to the assessment of likelihood of confusion (paragraphs (a)-(g) of the Registry’s summary). It then stated:

It can be seen that paragraph (k) in the Registry’s summary accurately reflects what the Court of Justice said in Medion v Thomson at [29], which addresses what the Court of Justice described at [30] as “the usual case”. Paragraph (k) does not reflect what the Court of Justice went on to say at [30]-[37] about the impact of a sign which forms part of a composite sign, but which has an independent distinctive role, on the likelihood of confusion.

Medion v Thomson has been referred to in many subsequent cases, but for present purposes it is only necessary to refer to six. I shall take them in chronological order.

In Novartis Seeds BV’s Application[2006] ETMR 82 Novartis applied to register the word CANTO. The Registrar refused the application on the ground of conflict with an earlier registration for ERIC CANTONA CANTO for identical goods. Geoffrey Hobbs QC sitting as the Appointed Person distinguished the case from BULOVA ACCUTRON and Medion v Thomson on the ground that the average consumer would perceive the earlier mark as a doubling up of a name and its nickname rather than a house mark plus invented word. Accordingly, he did not consider that the word CANTO performed an independent distinctive role in the composite mark ERIC CANTONA CANTO.

In DRILLISCH ALPHATEL Trade Mark Application[2009] ETMR 27 the applicant applied to register “Drillisch ALPHATEL” as a trade mark in Germany. The opponent opposed the applicant on the ground of conflict with four earlier registrations for the trade mark ALCATEL for very similar goods and services. The opposition was dismissed on the ground that there was no likelihood of confusion. The opponent’s appeal to the Bundespatentgericht (Federal Patent Court) was dismissed. Part of the Court’s reasoning was that the opponent had failed to prove that its trade mark had acquired an enhanced distinctive character: see paragraph [7] of the ETMR report. More importantly for present purposes, the Court held that the respective signs were only very slightly similar for reasons which it expressed as follows:

It can be seen from this reasoning that the Federal Patent Court held that Medion v Thomson did not extend to the case where the composite sign incorporated a sign which was merely similar to, rather than identical with, the earlier trade mark.

In OHIM v Shaker Shaker applied to register the following figurative mark as a Community trade mark:

The application was opposed by Limiñana y Botell, SL on the basis of an earlier Spanish registration for word LIMONCHELO. The OHIM Opposition Division upheld the opposition, essentially because it considered that the dominant element of the mark applied for was the word LIMONCELLO which was confusingly similar to LIMONCHELO. The Second Board of Appeal dismissed Shaker’s appeal. The Court of First Instance (now the General Court) allowed an appeal by Shaker. On an appeal by OHIM, the Court of Justice set aside the judgment of the CFI and remitted the case back to that court. The Court of Justice held that the CFI had misapplied Article 8(1)(b) for the following reasons:

It can be seen that paragraph (l) in the Registry’s summary accurately reflects what the Court of Justice said in OHIM v Shaker at [42]. In my view it is clear that in that paragraph the Court of Justice was merely adding a slight clarification to what it had said in Medion v Thomson at [29], which it had repeated in the preceding paragraph. This is nothing to suggest that it intended to qualify in any way what it had said in Medion v Thomson at [30]-[37]. Nor did it have any occasion to do so, since OHIM v Shaker was factually a different kind of case to Medion.

In Rousselon Frères et Cie v Horwood Homewares Ltd[2008] EWHC 881 (Ch), [2008] RPC 30 Horwood was the proprietor of registrations for JUDGE SABATIER and STELLAR SABATIER. Rousselon applied for a declaration of invalidity on the ground of conflict with several earlier registrations, one of which was of the word SABATIER on its own. The hearing officer dismissed the application. Warren J allowed the appeal on the ground that the hearing officer had failed correctly to apply Medion v Thomson.

In his judgment Warren J said this:

In this passage Warren J came quite close to saying that, if the earlier mark retains an independent distinctive role within the composite sign, then it must follow that there will be a likelihood of confusion. I do not think he went quite that far, however, since he recognised that the ultimate test remains whether there is a likelihood of confusion. In any event, as counsel for Dabur submitted, what the Court of Justice said at [37] of Medion v Thomson is that there “may be” a likelihood of confusion in those circumstances.

In Joined Cases T-5/08 to T-7/08 Société des Produits Nestlé v OHIM [2010] ECR II-1177 the applicant applied to register three Community trade marks consisting of the words GOLDEN EAGLE and an image of a red coffee mug placed on coffee beans. Nestlé opposed the applications on the grounds of conflict with various registrations consisting of a similar image of a red coffee mug on coffee beans for identical goods. The Opposition Division refused the oppositions finding the respective marks to be dissimilar. The Board of Appeal upheld the decision. Nestlé (represented, it may be noted, by the distinguished German trade mark lawyer Alexander von Mühlendahl) appealed to the General Court. The General Court annulled the decision of the Board of Appeal. It found that Nestlé’s mark and the corresponding element in the composite mark were similar and that there was some, albeit slight, overall visual and conceptual similarity between the marks. Accordingly, the Court concluded that the Board of Appeal should therefore have assessed the likelihood of confusion.

In this context the General Court held at [60]:

It does not appear, however, that the General Court’s reasoning was based on a finding that the image of a red coffee mug on coffee beans had an independent distinctive role in the marks applied for. Rather, its reasoning was based on an overall assessment of similarity.

In Case T-569/10Bimbo SA v OHIM [2012] ECR II-0000, [2013] ETMR 7 the applicant applied to register BIMBO DOUGHNUTS as a Community trade mark. The application was opposed on the basis of an earlier Spanish registration for DOGHNUTS covering identical and similar products. The opposition was successful. The applicant’s appeal to the Board of Appeal was dismissed. The applicant appealed to the General Court. The General Court agreed with the lower tribunals that there was a likelihood of confusion and dismissed the appeal.

A key part of the General Court’s reasoning was as follows:

It should be noted that, although the General Court held that DOUGHNUTS was “almost identical” to DOGHNUTS, it did not proceed on the basis that the average consumer would perceive it as being identical. An appeal to the CJEU against the decision of the General Court is pending as Case C-591/12 P.

Turning to the present case, the following facts are relevant to the issue presently under consideration:

As noted above, it is common ground that none of the words AVEDA, DABUR and UVEDA has any conceptual meaning for the average consumer.

As noted above, the hearing officer held that AVEDA had a high level of distinctive character and that there had been significant use of the mark in relation to beauty products.

Counsel then appearing for Dabur before the hearing officer positively asserted, and thereby admitted, that DABUR was a house mark which Dabur used in combination with other words (see the decision at [56]).

Counsel for Dabur before me accepted that normal and fair use of DABUR UVEDA would include visual representations in which the word UVEDA was in a different typeface and larger font size to the word DABUR.

Against that background, Aveda’s trade mark attorney argued in summary as follows:

The hearing officer had failed correctly to apply Medion v Thomson at [57]. He had held that there was no likelihood of confusion because he considered that DABUR and UVEDA were equally dominant within DABUR UVEDA, and that, considered as a whole, DABUR UVEDA was not confusingly similar to AVEDA. He had failed to ask himself whether UVEDA played an independent distinctive role within the composite sign and whether that would lead to a likelihood of confusion.

On a correct application of Medion v Thomson the hearing officer should have concluded that the average consumer would perceive DABUR UVEDA as a house mark (DABUR) plus a secondary mark (UVEDA), that the average consumer familiar with AVEDA would be likely to mistake UVEDA for AVEDA and thus there would be a likelihood of confusion. The addition of DABUR would not prevent confusion, because the average consumer might well think that goods marked DABUR UVEDA emanated from an undertaking which was economically linked to the undertaking responsible for AVEDA.

Counsel for Dabur argued in summary as follows:

Medion v Thomson did not establish any exception to the general rule that marks and signs should be assessed by reference to their overall impression.

Even if did establish such an exception, Medion v Thomsondid not extend to situations in which the composite sign incorporated a sign which was similar to, rather than identical with, the trade mark. Accordingly the hearing officer was correct to treat the present case as one where the usual approach of considering the composite sign as a whole was to be followed.

Even if Medion v Thomsondid extend to such situations, in the present case the hearing officer had not found that UVEDA had an independent distinctive character within the composite sign, nor should he have done.

In any event, the Court of Justice had made it clear that the fact that the sign had an independent distinctive role within the composite sign did not automatically lead to the conclusion that there was a likelihood of confusion. In the present case the hearing officer was entitled to conclude that there was no likelihood of confusion.

Counsel for Dabur’s second submission (although not his first submission) is supported by DRILLISCH ALPHATEL. One of the leading commentaries on German trade mark law states, however, that Medion v Thomson can apply where the earlier mark and the component of the sign are not identical, but only similar. In this context the authors refer to DRILLISCH ALPHATEL as “unzutreffend”, i.e. wrong: see R. Ingerl and C. Rohnke, Markengesetz (Beck, 2010) §14 at paragraph 1135. They are supported by Nestlé v OHIM and Bimbo v OHIM, particularly the latter.

I must apply the decisions of the General Court. In addition, however, I consider that the General Court is correct on this point. My reasons are as follows.

Although the decision in Medion v Thomsondoes not in terms extend to cases in which the composite sign incorporates a sign which is similar to, rather than identical with, the trade mark and some of the Court of Justice’s reasoning would not apply to such a case, I consider that the underlying logic is equally applicable.

I entirely accept the basic proposition which the Court of Justice has repeated many times, namely that the assessment of likelihood of confusion must be made by considering and comparing each of the signs as a whole. As the Court of Justice recognised in Medion v Thomson, however, there are situations in which the average consumer, while perceiving a composite sign as a whole, will recognise that it consists of two signs one or both of which has a significance which is independent of the significance of the composite whole. Thus when the well-known pharmaceutical company Glaxo plc acquired the well-known pharmaceutical company Wellcome plc, the average consumer of pharmaceutical goods confronted with the composite sign GLAXO WELLCOME or GLAXOWELLCOME would perceive the significance of both the whole and its constituent parts and conclude that this was an undertaking which combined the two previously separate undertakings (see Glaxo Group Ltd v Glaxowellcome Ltd[1996] FSR 388). The essence of the Court of Justice’s reasoning in Medion v Thomson is that an average consumer of leisure electronic products confronted with the composite sign THOMSON LIFE could perceive both the whole and its constituent parts to have significance and thus could be misled into believing that there was a similar kind of connection between the respective undertakings.

As Mr Hobbs’ decision in Novartis Seeds shows, this can only occur in circumstances where the consumer perceives the relevant part of the composite sign to have significance independently of the whole. In that case Mr Hobbs did not think that the average consumer would perceive CANTO to have significance independently of ERIC CANTONA CANTO. On the contrary, he considered that the average consumer would perceive ERIC CANTONA CANTO as a unit in which only ERIC CANTONA had independent significance.

In my view the principle which I have attempted to articulate in paragraph 45 above is capable of applying where the consumer perceives one of the constituent parts to have significance independently of the whole, but is mistaken as to that significance. Thus in BULOVA ACCUTRON the earlier trade mark was ACCURIST and the composite sign was BULOVA ACCUTRON. Stamp J held that consumers familiar with the trade mark would be likely to be confused by the composite sign because they would perceive ACCUTRON to have significance independently of the whole and would confuse it with ACCURIST.

On that basis, I consider that the hearing officer failed correctly to apply Medion v Thomson. He failed to ask himself whether the average consumer would perceive UVEDA to have significance independently of DABUR UVEDA as a whole and whether that would lead to a likelihood of confusion. Accordingly, it is necessary for me to consider the matter afresh. Having regard to the matters set out in paragraph 39 above, I think there can be little doubt that the average consumer who was familiar with AVEDA beauty products would be likely to be confused by the use of DABUR AVEDA in relation to identical goods. In particular, there would be a strong likelihood that the average consumer would think that it indicated some connection between DABUR and AVEDA. In my judgment it makes little difference that the second word in the composite mark is UVEDA rather than AVEDA. As the hearing officer rightly accepted, UVEDA is both visually and aurally very close to AVEDA. The human eye has a well-known tendency to see what it expects to see and the human ear to hear what it expects to hear. Thus it is likely that some consumers would misread or mishear UVEDA as AVEDA. (Indeed, not only did the hearing officer himself write AVEDA instead of UVEDA at [43], but also the Intellectual Property Office’s database of past decisions currently records the contested mark as being “Dabur AVEDA”.)

While this leads to the conclusion that the hearing officer should have found that there was a likelihood of confusion at least in relation to goods covered by Dabur’s application which are identical to Aveda’s goods, it remains to be determined whether there is a likelihood of confusion in relation to goods which are similar. Before addressing this question, I must consider Aveda’s other grounds of appeal.

Aveda’s second ground of appeal is that the hearing officer was wrong not to admit its late evidence. This evidence consisted essentially of some print-outs from the internet showed how Dabur was using DABUR UVEDA. Since the evidence was tendered to prove two points which were not in dispute before me (namely those set out in sub-paragraphs 39(iii) and (iv) above), however, Aveda does not need this evidence.

Aveda’s third ground of appeal is that the hearing officer failed to apply the interdependency principle (paragraph (e) of the Registry’s summary). In support of this ground of appeal Aveda’s trade mark attorney pointed out that there is no reference to this principle, nor any overt sign of its application, in the part of the decision where the hearing officer considered likelihood of confusion. Furthermore, he argued that this principle strongly supported a finding of likelihood of confusion given the hearing officer’s findings that (i) AVEDA was highly distinctive, (ii) some of the goods were identical and (iii) overall there was moderate similarity between the marks. Against that, counsel for Dabur pointed out that the hearing officer stated at [51] that he was applying the global approach and that it was inconceivable that an experienced hearing officer would have failed to take such a well-known principle into account. I have to say I am somewhat doubtful that the hearing officer did properly apply this principle, but it is not necessary for me to reach a conclusion on this point in the light of my conclusion with respect to the first ground of appeal.

Aveda’s fourth ground of appeal is that the hearing officer incorrectly assessed the attributes of the average consumer. It suffices to say that I am unpersuaded that he made any error in this respect.

Aveda’s fifth ground of appeal is that the hearing officer erred in concluding that some of the respective goods were not similar. Under this heading some minor criticisms were made of the hearing officer’s decision which I do not regard as coming near to demonstrating an error of principle. More significantly, however, Aveda contends that the hearing officer’s assessments at [28], [32] and [34] were flawed for the following reasons.

Aveda’s trade mark attorney argued that the hearing officer’s reasoning at [28], which was to the effect that “cleaning, polishing, scouring and abrasive preparations” did not include, and were not even similar to, “cleaning, polishing, scouring and abrasive preparations for use on the body” was perverse. In my judgment, however, there is a more fundamental problem with it, which is that it is inconsistent with his earlier acceptance that Aveda had demonstrated use of “cleaning, polishing, scouring and abrasive preparations for use on the body” as a sub-category of “cleaning, polishing, scouring and abrasive preparations”. That acceptance necessarily led to the conclusion that “cleaning, polishing, scouring and abrasive preparations” were identical to “cleaning, polishing, scouring and abrasive preparations for use on the body” in the sense that the former encompassed the latter. But the hearing officer’s reluctance to accept that conclusion indicates that he ought to have questioned the premise.

What lies behind this is that Aveda accepts that it had made no use of its trade mark in relation to household or industrial cleaning, polishing, scouring and abrasive preparations during the relevant period, but contends that it had used the mark in relation to cleaning, polishing, scouring and abrasive preparations for use on the body. More specifically, Aveda relies upon use in relation to exfoliants, body polishers and dermabrasives.

I reviewed the correct approach to the construction of the specification of goods and/or services of a registered trade mark in Omega Engineering Inc v Omega SA[2012] EWHC 3440 (Ch) at [21]-[33]. In short, the words used in the specification should be given their natural and usual meaning. They should neither be given such a broad interpretation that the limits of the specification become fuzzy, nor strained to produce a narrow meaning.

I have reviewed the law in relation to partial revocation for non-use in Stichting BDO v BDO Unibank Inc[2013] EWHC 418 (Ch) at [51]-[62]. In short, the tribunal is required to arrive at a fair specification by identifying and defining not the particular examples of goods for which there had been genuine use, but the particular categories of goods they should realistically be taken to exemplify. For that purpose the terminology of the resulting specification should accord with the perceptions of the average consumer of the goods or services concerned. It is for the tribunal to decide what is a fair specification, not the parties. Furthermore, the tribunal is obliged to ensure that the resulting specification is clear and precise: see BDO at [49].

The hearing officer considered that “cleaning, polishing, scouring and abrasive preparations” would be understood by the average consumer as referring to household and industrial preparations. If so, then the conclusion he should have drawn was that Aveda had not demonstrated any use of its mark in relation to such goods. On that basis, Aveda’s use in relation exfoliants, body polishers and dermabrasives would be use in relation to some other category or sub-category of goods.

The Oxford English Dictionary defines “exfoliant” as meaning “a cosmetic product designed to remove dead cells from the surface of the skin”. It does not have a definition for “dermabrasive”, but it defines “dermabrasion” as “the removal of superficial layers of the skin with a rapidly revolving abrasive tool”. My understanding is that a dermabrasive in the present context is similar to an exfoliant, but perhaps a little more intensive. Equally, I understand a body polisher to be similar, but perhaps a little less intensive.

I see no reason to differ from the hearing officer as to the meaning of “cleaning, polishing, scouring and abrasive preparations”. In my judgment the average consumer would not regard exfoliants, body polishers and dermabrasives as exemplifying a sub-category of “cleaning, polishing, scouring and abrasive preparations for the body”. Rather, he or she would regard them as examples of “skin care products, namely … cleansing lotions” and/or “body cleansing lotions”.

It remains necessary to consider whether “cleaning, polishing, scouring and abrasive preparations” in Dabur’s Class 3 specification are similar to any goods in respect of which Aveda proved use or was not required to prove use. The closest goods are“skin care products, namely … cleansing lotions” and/or “body cleansing lotions”, as exemplified by exfoliants, body polishers and dermabrasives. Applying the criteria laid down in Case C-39/97Canon KK v Metro-Goldwyn-Mayer Inc [1998] ECR I-5507 at [23] and British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 296-297, I consider that these are not similar. Their uses, physical nature and trade channels are all different, and they are neither competitive nor complementary. An overlap in users is not enough.

It follows that I have reached essentially the same conclusion as the hearing officer, but by a different route.

Aveda’s trade mark attorney argued that the hearing officer’s reasoning at [32] was flawed because it relied on his reasoning at [28]. In my judgment the hearing officer asked himself the wrong question here: he should have asked himself whether dentrifices were similar to “skin care products, namely … cleansing lotions” and/or “body cleansing lotions”, as exemplified by exfoliants, body polishers and dermabrasives. In my view they are reasonably similar. Their uses, users, physical nature and trade channels are all similar, and they could be regarded as complementary.

As Aveda’s trade mark attorney pointed out, the hearing officer was in error in treating the relevant term of Dabur’s specification as being “preparations for destroying fungicides”: the correct term is simply “fungicides”. He also pointed out that there are medicated skin creams which are used to treat fungal infections. On that basis, he argued that the hearing officer’s reasoning at [34] was inconsistent with what he had said in [33]. I agree with this. It follows that I consider that the hearing officer should have concluded that there was similarity in this respect.

It follows from my previous conclusions that it is necessary for me to re-assess the likelihood of confusion not only in relation to those goods which the hearing officer found to be highly or reasonably similar, but also in relation to dentrifices and fungicides. Taking all of the relevant factors into account, and applying the interdependency principle, I conclude that there is a likelihood of confusion in relation to all of these goods.

The appeal succeeds except in relation to cleaning, polishing, scouring and abrasive preparations in Class 3. Accordingly Dabur’s mark may proceed to registration only in respect of the following goods: