Soulcycle Inc v Matalan Ltd

This is an appeal against the decision of the Hearing Officer, Mr Oliver Morris, for the Registrar of Trade Marks in Decision No O-445-16 (“the Decision”), dated 22nd September 2016. In that decision the Hearing Officer ruled on the opposition by SoulCycle Ltd (“SoulCycle”) to the registration of a mark by Matalan Ltd (“Matalan”) and dismissed the opposition in its entirety. SoulCycle now appeals that decision. The opposition was on the basis that SoulCycle had registered prior marks and said that registration of a proposed mark by Matalan should be rejected on the grounds set out in section 5(2)(b) of the Trade Marks Act 1994. On this appeal SoulCycle was represented by Mr James Mellor QC and Matalan by Mr Guy Tritton. At the hearing below SoulCycle had been represented by Mr Stuart Baran.

SoulCycle has registered UK and European marks for various goods and services. They all incorporate the word “Soul”, sometimes by itself, sometimes as part of a longer word mark or a composite word (SOULCYCLE). In some cases the “O” is replaced by a flower-like emblem. The detail of all this does not matter, because it was accepted below that it would be useful to take one of those marks as being the earlier mark against which confusion could usefully be tested. It was anticipated that a decision on that would make deciding about the other marks easier. The mark chosen was European mark no. 12825303, being the mark “SOUL” registered for a number of goods in class 25. As will appear below, the same approach was adopted on this appeal.

The new mark which Matalan seeks to register is the following:

The debate about those two marks proceeded on the footing that each mark covered the same goods, and the nature of the goods did not figure on this appeal. The Hearing Officer reached his decision on the conflict between those two marks, and then went on briefly to consider his decision in relation to other goods and conflicts between the proposed mark and other marks of SoulCycle. However, on this appeal it was agreed that I could usefully focus on the main dispute adjudicated on by the Hearing Officer and that other areas of dispute could well be dealt with by agreement once that main dispute was dealt with, or there could be a further hearing (hopefully short) at which any unresolved wrinkles could be ironed out. I was therefore able to consider this appeal just on the footing of the conflict between the two marks just identified.

The dispute concerned the application of section 5(2)(b) of the Act:

“5.-(2) 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 for which the earlier trade mark is protected,

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

The debate in the present case centred around that section and alleged confusion between SoulCycle’s existing mark and Matalan’s proposed mark.

There was no dispute as to this. It was accepted that this appeal is not a complete rehearing. This court is only entitled to interfere with the Decision if the Hearing Officer made an error of principle which was distinct and material. Mr Tritton also emphasised the respect that is due to findings of an experienced Hearing Officer determining matters such as those in play in the present case, relying on South Cone v Reef [2003] RPC 5 (per Walker LJ):

“28.

In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's specialised experience. (It is interesting to compare the observations made by Lord Radcliffe in Edwards v Bairstow [1956] A.C. 14 at pp.38–39, about the general commissioners, a tribunal with a specialised function but often little specialised training.) On the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.

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 30, 2002, para.19:

“… the judgment must enable the appellate court to understand why the judge reached his decision. This does not mean that every factor which weighed with the judge in his appraisal of the evidence has to be identified and explained. But the issues the resolution of which were vital to the judge's conclusion should be identified and the manner in which he resolved them explained. It is not possible to provide a template for this process. It need not involve a lengthy judgment. It does require the judge to identify and record those matters which were critical to his decision.””

I accept that I can and should apply that approach.

There was a difference as to what course I should adopt should I conclude that there was an error of principle. Mr Mellor invited me to decide the relevant matters myself; Mr Tritton invited me to remit the matter for hearing by another Hearing Officer. I shall cross that bridge if and when I come to it. For the present I will merely observe that the hearing below proceeded with no oral evidence being presented, so I would have available to me all the material available to the Hearing Officer, and in the same form.

Because the case of the appellant turns on the precise formulation of some of the Hearing Officer’s decisions it will be necessary to set out sections of it verbatim. Otherwise it can be summarised.

The early paragraphs set out non-controversial background. Paragraph 10 sets out the principles which he gleaned from a number of judgments (which he identified):

“10 … (a) The likelihood of confusion must be appreciated globally, taking account ofall relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the goods or services in question, 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, and whose attention varies according to the category of goods or services in question;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;

(f)

however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g)

a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h)

there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i)

mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k)

if the association between the marks creates a risk that the public will wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”

Mr Mellor did not take issue with any of these principles, though he did say that the Hearing Officer failed to acknowledge one further aspect of a consideration of the marks by the average consumer, which is that the average consumer has to have the earlier mark in mind, albeit not necessarily perfectly. He submitted that the Hearing Officer seemed to have lost sight of that factor. Mr Tritton accepted that that was a feature to be attributed to the average consumer but did not accept that the Hearing Officer had lost sight of it.

In his next section the Hearing Officer considered the similarity of the goods in question. Once one narrows the debate to the marks and classes which are now in issue it is accepted that the relevant goods are identical for the two marks which are under consideration on this appeal and which formed the centrepiece of the Hearing Officer’s Decision. They are basically items within a wide range of sportswear. No issue arises in this area.

In his next section the Hearing Officer attributes various further qualities to the average consumer. Mr Mellor accepted that what he said was correct:

“35.

The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect. For the purpose of assessing the likelihood of confusion, it must be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question: Lloyd Schuhfabrik Meyer, Case C-342/97. In Hearst Holdings Inc, Fleischer Studios Inc v A.V.E.L.A. Inc, Poeticgem Limited, The Partnership (Trading) Limited, U Wear Limited, J Fox Limited, [2014] EWHC 439 (Ch), Birss J. described the average consumer in these terms:

“60.

The trade mark questions have to be approached from the point of view of the presumed expectations of the average consumer who is reasonably well informed and reasonably circumspect. The parties were agreed that the relevant person is a legal construct and that the test is to be applied objectively by the court from the point of view of that constructed person. The words “average” denotes that the person is typical. The term “average” does not denote some form of numerical mean, mode or median.”

36.

The average consumer will be a member of the general public, or, in the case of sportswear and lifestyle activity clothing, members of the general public (and sportsmen/women) who wish to play sports or undertake a particular lifestyle activity. The goods are not overly expensive and purchased fairly frequently which suggests a purchasing process that is no higher or lower than the norm. The goods are likely to be selected from websites, brochures or physical premises. This could be either from specialist sports shops, but also more general clothing retailers. The manner of selection indicates that the visual impact of the marks will take on more importance, although any other aspects of similarity are not to be ignored completely from the analysis.”

In his next section the Hearing Officer considered the “Comparison of the marks”. It is in this section that Mr Mellor asserts the Hearing Officer made errors. I shall allude to them briefly at this stage before developing the points later in this judgment.

In paragraphs 37 and 38 the Hearing Officer referred to the need to assess similarities by reference to “the overall impressions created by the marks, bearing in mind their distinctive and dominant components”; and he says it would be wrong artificially to dissect the marks. No objection is made to that summary. Having included the applied for mark in paragraph 39, he made observations about it in paragraph 40:

“40.

As can be seen, the mark consists of the word souluxe in a particular but unremarkable font, where the letter O of that word is shaded, together with four other evenly spaced shaded circles below that word. The shading of the letter “O” in souluxe does not prevent the word from being seen as souluxe. The eye will still see it as a single word as opposed to the letter “s” and the word “uluxe” separated by a shaded circle. Mr Baran submitted that the word element “souluxe” dominated the overall impression. I agree, but I also accept Mr Tritton’s submission that it is still important to take into account all of the elements that contribute to the overall presentation of the mark, including the shaded circles. In that respect, I find that the shaded circles make a far from negligible contribution to the overall impression even if they do not carry most weight.”

At paragraph 41 he starts to break down his assessed parts:

“41.

Mr Baran also submitted that within the word souluxe, the word soul would have more significance. He submitted that it was a portmanteaux comprised of a co-elision of the words SOUL and LUXE. The reason that Mr Baran felt that SOUL had more significance was because of the combined effect of SOUL being at the beginning of the word, together with that word being distinctive, unlike LUXE. I return to this point in more detail below, but either way, I do not consider that what has been put forward by Mr Baran equates to the word SOUL comprising an element which dominates the overall impression of the mark.”

This paragraph would, I think, fall within Mr Mellor’s criticism of the Hearing Officer’s approach in failing to give a proper emphasis to the word “SOUL” because of what is said to be an erroneous identification of the mindset of the average consumer.

Next the Hearing Officer considers visual comparisons and concludes:

“42.

Visually, the fact that the letters/word “soul” comprises the first part of the more dominant element of the applied for mark creates an aspect of similarity with the word SOUL alone. … Whilst I agree to a certain extent that the common element being at the beginning of the words/marks means that the similarity that does exist will not be overlooked or missed, I nevertheless consider that the differences inherent in the additional letters UXE and the shaded circles plays a significant part in limiting the degree of similarity that the average consumer will observe. I consider the degree of visual similarity, when comparing the marks as a whole, whilst bearing in mind my assessment of the respective marks’ overall impressions, is of only a low degree.”

Mr Mellor had limited criticisms to make of this approach.

Paragraph 43 deals with aural similarity:

“43.

Aurally, SOUL will be articulated as in the type of pop music. There are two main ways in which the applied for mark could be articulated: SOUL-UCKS or SO-LUCKS. The first articulation has a slightly higher (but not much higher) degree of aural similarity to the earlier mark than the second, but both are still in the realm of having a medium degree of aural similarity.”

Mr Mellor submitted that this paragraph failed to give effect to how the similarity would be perceived by a group of average consumers who recognised the word “Soul” at the beginning of the word. This error was said to emerge from what was one of the two main focuses of Mr Mellor’s attack, which was paragraph 44:

“44.

Conceptually, Mr Tritton argued that the average consumer would not break the mark down as SOUL and LUXE and would, instead, see it simply as an invented word. Mr Baran argued that the average consumer would break the mark down in the same way as he/she may break down marks such as VAPOURUB (VAPOUR and RUB) and DELIVEROO (DELIVER and ROO), with the consequence that the conceptual meaning of the applied for mark would be based upon the word SOUL and the word LUXE (the latter being indicative of luxury), the former being a distinctive word with no specific relationship to the goods. This is the type of case where there is no binary answer. Some will see the mark as wholly invented without any form of evocative concept. Others may break the mark down at least in a way in which they will appreciate that the mark begins with the word SOUL. For those that see the mark as wholly invented then there is no conceptual similarity with the earlier mark, the concept of the earlier mark being based upon a type of music or the spiritual part of a being. For those that appreciate that the applied for mark begins with the word SOUL, this creates some conceptual similarity, but this should not be placed at a high level because of the way in which that word combines with the rest of the verbal element of the mark creating either a meaningless word as a whole, or an invented word combination (if it is seen as a co-elision of SOUL and LUXE) that indicates luxury as well as the meaning of SOUL.”

Mr Mellor made a number of points about this paragraph, whose approach was said to taint other parts of the Decision. He criticised the identification of two classes of average consumer, submitted that it was inevitable that a consumer who had seen the earlier mark would have “Soul” in mind (and would therefore be in the second category of the consumers identified in the decision, to the exclusion of the first), said that that would inevitably make a conceptual similarity more apparent, and finally said that this error is likely to have tainted the earlier findings on visual and aural similarity. He also ran an alternative case, based on the existence of the two classes, and following through on the second of them.

In paragraph 47 the Hearing Officer found that the earlier mark had a medium (and not a high or low) level of distinctiveness before turning to a section entitled “Likelihood of confusion”. He quoted from LA Sugar Ltd v By Back Beat Inc Case BL-O/375/10 where the tribunal referred to direct and indirect confusion, rejected the notion of direct confusion and reached a conclusion in paragraph 52, which is the other paragraph which lies at the heart of Mr Mellor’s appeal in this case:

“52.

For consumers who do not see the word SOUL in SOULUXE then there will be no likelihood of indirect confusion, for obvious reasons. I must, though, countenance the possibility of confusion in respect of what is likely to be a sufficiently significant proportion of people who would see SOULUXE as an invented (or portmanteaux) word which starts with the word SOUL. Having carefully considered the matter, I consider that the construction of the word element of the applied for mark is such that it is asking too much of the average consumer to come to the conclusion Mr Baran has put forward. It does not strike me as a normal way in which a sub or variant brand will be presented. Further, it does not help (the opponent) that SOUL in the applied for mark does not perform an independent distinctive role in the mark - the way in which it has been constructed puts pay to that. Neither is the common element highly distinctive. Even if LUXE (if seen as part of a coalesced portmanteaux) gives a suggestive connotation of luxury, the unusualness of the end result (SOULUXE) does not indicate a variant brand of SOUL. I conclude that there is no likelihood of (in)direct confusion even in respect of identical or highly similar goods.”

In particular he criticised the failure to give proper effect to the view that “Soul” would be an apparent word at the beginning of the new mark.

As indicated above, most of Mr Mellor’s criticisms of the decision below stemmed from paragraph 44 and the associated argument in paragraph 52. His first criticism was that the Hearing Officer was wrong to proceed on the footing of two different classes of the average consumer, each determined by their own perceptions of the mark as opposed to being defined by reference to a matter extrinsic to the mark. He said that there ought to have been one class only, and that class ought to have been the second of the Hearing Officer’s classes, namely those who would break the mark down and appreciate that the mark begins with the word “Soul” (because the average consumer views the applied for mark with some knowledge of the earlier mark, which was the word “Soul” by itself). For ease of reference, on this appeal this group was called the “Soul group”.

Mr Mellor did not go so far as to say that there could never be two or more types or classes of average consumer for the purposes of assessing the likelihood of confusion. He accepted that in infringement cases one could consider the effect of the mark and the offending product on different classes of average consumer and come to the conclusion that there could be confusion in one class but not the other. He also seemed to accept that in an infringement case the court could find infringement on the basis of an assessment that a proportion of a given class of consumer would be confused. However, he submitted that infringement proceedings were different from validity proceedings because in the former proceedings there was a factual context which was missing from the latter. He also sought to suggest that opposition proceedings were different for some other reason that he could not put his finger on and that even if one could seek a proportion of confused consumers in the final assessment of confusion one could not apply a proportion-considering technique to the earlier assessments of the elements leading up to the final conclusion (aural, visual and conceptual similarity).

In the end it was not clear to me where Mr Mellor’s argument left him on the point, but he did not seem to accept sufficiently unequivocally that the Hearing Officer’s use of proportions was correct, so I should deal with it. It seems to me that the approach of the Hearing Officer was justified on authority.

In Hearst Holdings Inc v AVELA Inc [2014] EWHC 439 Birss J proceeded to consider marks and confusion on the footing of three classes of average consumer - licensees (or putative licensees), retailers and the like, and the purchasing public - see paragraphs 72 to 75. The test of possible confusion was applied separately to two of them (see paragraphs 156 and 162). This was in the context of infringement, not validity, and Mr Mellor submitted that that made a difference because infringement was considered in an actual factual context when a validity question was not. But that seems to me to make no difference. It provides a different evidential context which is perhaps a bit less abstract, but the nature of the inquiry is the same.

The object is to ascertain whether an average consumer would be confused, and that person is not an overly-artificial construct. In Schutz (UK) Ltd v Delta Containers Ltd [2011] EWHC 1712 Briggs J proceeded on the footing of two classes of average consumer (end-users and fillers) - see paragraph 93. He also explained that the concept of the average consumer did not require one to find some sort of average between those two, and that it was necessary to consider the perception of consumers “within any relevant class”:

“98.

In my judgment the application of the average consumer test to the question whether Delta used Schütz' trade marks in relation to the bottles of the IBCs as a whole does not depend upon a vain attempt to find a notional average consumer with perceptions somewhere between those of the fillers on the one hand and the end-users on the other. The search for a statistical average is neither warranted by European jurisprudence, nor sensible in the present context. In my judgment the test requires the court to identify the relevant perception of consumers within any relevant class who are neither deficient in the requisite characteristics of being well informed, observant and circumspect, nor top performers in the demonstration of those characteristics. That is in substance what "average" means.”

That approach is equally applicable to validity challenges. There is no logical reason why it should not be.

Those two cases are both cases in which the court considered the position of two or more classes of average consumer where the class was defined by the differing qualities of their relationships to the mark. Unlike the present case, they were not defined by reference to their perceptions of the mark. The dichotomy in the present case is different. The Hearing Officer considered two different classes of people within the same apparent type of consumer - retail purchasers. He defined them by reference to how they perceived an aspect of the mark. Mr Mellor’s case was that that was different, impermissible and wrong.

I do not consider that the Hearing Officer made an error of principle in this respect. In considering the question of the effect of the mark within the class, by reference to proportions who did not share the same view, he was following the same line as that pursued by Arnold J at first instance in Interflora Inc v Marks and Spencer plc [2013] EWHC 1291 (Ch). Arnold J considered at some length whether there was a “single meaning rule” in trade mark law under which the court had to identify one, and one only, perception amongst the relevant class of average consumer, and judge confusion accordingly. At paragraph 213 he found there is no such rule and then set out his reasoning over the following paragraphs. Paragraph 224 set out important parts of his conclusion; the references to Lewison LJ is to that judge’s judgment in an earlier case.

“224 …  Thirdly, Lewison LJ expressly accepts that a trade mark is distinctive if a significant proportion of the relevant public identify goods as originating from a particular undertaking because of the mark. Thus he accepts that there is no single meaning rule in the context of validity. As I have said, that is logically inconsistent with a single meaning rule when one comes to infringement. Fourthly, the reason why it is not necessarily sufficient for a finding of infringement that "some" consumers may be confused is that, as noted above, confusion on the part of the ill-informed or unobservant must be discounted. That is a rule about the standard to be applied, not a rule requiring the determination of a single meaning. If a significant proportion of the relevant class of consumers is confused, then it is likely that confusion extends beyond those who are ill-informed or unobservant. Fifthly, Lewison LJ does not refer to many of the authorities discussed above, no doubt because they were not cited. Nor does he discuss the nature of the test for the assessment of likelihood of confusion laid down by the Court of Justice. The legislative criterion is that "there exists a likelihood of confusion on the part of the public". As noted above, the Court of Justice has held that "the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion". This is not a binary question: is the average consumer confused or is the average consumer not confused? Rather, it requires an assessment of whether it is likely that there is, or will be, confusion, applying the standard of perspicacity of the average consumer. It is clear from the case law that this does not mean likely in the sense of more probable than not. Rather, it means sufficiently likely to warrant the court's intervention. 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.” (my emphasis)

That justifies a consideration of confusion in relation to a proportion of the class of average consumer by reference to perceptions, in the manner in which the Hearing Officer went about the matter. It also justifies applying the same technique (where appropriate on the facts) to validity and infringement proceedings alike.

In the same case the Court of Appeal allowed an appeal from Arnold J’s judgment ([2014] EWCA Civ 1402), but not because they disagreed with that particular part of his analysis. Although they did not in terms accept it, they set out an approach which nonetheless acknowledged the correctness of recognising that within a class of average consumer there might be different perceptions, and it would be relevant to confusion to consider whether a significant proportion of that class would be confused:

“129.

As we have seen, the average consumer does not stand alone for it is from the perspective of this person that the court must consider the particular issue it is called upon to determine. In deciding a question of infringement of a trade mark, and determining whether a sign has affected or is liable to affect one of the functions of the mark in a claim under Article 5(1)(a) of the Directive (or Article 9(1)(a) of the Regulation), whether there is a likelihood of confusion or association under Article 5(1)(b) (or Article 9(1)(b)), or whether there is a link between the mark and the sign under Article 5(2) (or Article 9(1)(c)), the national court is required to make a qualitative assessment. It follows that it must make that assessment from the perspective of the average consumer and in accordance with the guidance given by the Court of Justice. Of course the court must ultimately give a binary answer to the question before it, that is to say, in the case of Article 5(1)(b) of the Directive, whether or not, as a result of the accused use, there exists a likelihood of confusion on the part of the public. But in light of the foregoing discussion we do not accept that a finding of infringement is precluded by a finding that many consumers, of whom the average consumer is representative, would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportionof the relevant public is likely to be confused such as to warrant the intervention of the court then we believe it may properly find infringement.

130.

In the circumstances of this case we are, of course, concerned with a claim under Article 5(1)(a) (and Article 9(1)(a)) in the context of internet advertising and the question to be answered was whether the advertisements in issue did not enable reasonably well-informed and observant internet users, or enabled them only with difficulty, to ascertain whether the goods and services so advertised originated from Interflora or an undertaking economically linked to Interflora or, on the contrary, originated from M & S, a third party. In answering this question we consider the judge was entitled to have regard to the effect of the advertisements upon a significant section of the relevant class of consumers, and he was not barred from finding infringement by a determination that the majority of consumers were not confused.” (again, my emphasis)

That case therefore allows the approach of the Hearing Officer. It therefore follows that Mr Mellor’s criticism of the overall approach of the Hearing Officer in paragraph 44 is not well-founded. In finding, as he apparently did, that some average consumers would have one perception and others would have another the Hearing Officer was within the exercise anticipated by the courts in Interflora. True it is that he was not considering the end question of confusion itself, which is another distinction relied on by Mr Mellor. He was considering conceptual similarities and perceptions before coming to a conclusion on confusion. But 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.

However, that is not an end of Mr Mellor’s case on paragraph 44. He has an alternative case based on the assumption that the Hearing Officer was entitled to consider the two groups which he did. Mr Mellor’s criticism, on that footing, is that the Hearing Officer did not follow through properly in relation to his second group (the Soul group) and in fact elided that group with the other group (the “unit group”). He makes that submission on the basis of a detailed analysis of the last sentence of paragraph 44 (“For those that appreciate …”) in which the Hearing Officer expresses his conclusion on how conceptually similar the Soul group would find the mark.

For Mr Mellor the sentence starts adequately by finding some conceptual similarity. The expression of its level (“not … at a high level”) is the conclusion, and that is wrong because the chain of reasoning that follows is not a sound chain. The Hearing Officer considers 2 possible views - one in which the word “Soul” combines with the rest of the word to produce a “meaningless word”, or one in which it seen as an invented word combination (combining “Soul” with “Luxe”, the latter word indicating luxury). Mr Mellor submits that, almost by definition, the Soul group would not see the applied for mark as being a “meaningless word” because they will see it is starting with “Soul”. If they do that, they will inevitably not view the mark as the Hearing Officer’s invented word combination. Mr Mellor submits that what the Hearing Officer has done is to forget that he is considering the “Soul” group alone and has in fact elided the two groups. It is only the unit group who will see the mark as a “meaningless word”. Accordingly, the Hearing Officer has down-graded the level of similarity by mixing those two groups together.

I do not consider that to be a correct analysis. The Hearing Officer plainly has his two classes of average customer in mind. He considered the Soul group and concluded that they would not, as a group, have a uniformly high perception of conceptual similarity because whichever way they view the recognised word (“Soul”) its significance is lessened because of its position in the mark and its combination with characters which follow. In saying that some of the class would see “Soul” as part of a meaningless word he is not equating them with people who do not see the word “Soul” at all; it is not necessarily meaningless only to the unit group. The Hearing Officer is acknowledging that Soul group members will, or may, see the word “Soul” but as part of a meaningless whole. That is a justifiable conclusion which is not at odds with his analysis. It is a conclusion which an appellate court should respect. His overall assessment of the degree of perceived conceptual similarity, untainted by the error relied on by Mr Mellor, is of the same character. Mr Mellor himself accepted that were it not for his point on the use of “meaningless word”, the assessment in paragraph 44 would be one with which this court should not interfere. Accordingly, on his own logic, since his “meaningless point” fails, the paragraph is unobjectionable.

As a prelude to his submissions on this paragraph Mr Mellor drew attention to cases dealing with composite marks and the need to consider whether any element of that mark which is said to create a similarity has an independent distinctive role (Medion AG v ThomsonSales [2005] ECR 1-8551, Bimbo SA v OHIM Case C-591/12 and in particular White v Mackay [2015] EWHC 1271 (Ch)). It was not clear whether he was saying that the Hearing Officer ignored or misapplied this jurisprudence, but I observe that Medion is referred to in the Hearing Officer’s decision in a list of cases from which relevant principles are to be extracted (paragraph 10) and three of his principles are the following:

“(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;

(f)

however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;”

It is apparent that he adverted to the principles which might be extracted from those cases and to the sort of issues that might arise, and it can be inferred that he had them in mind (so far as relevant to his decision) in paragraph 44.

Mr Mellor then turned his fire on to paragraphs 42 (visual similarity) and 43 (aural similarity) of the decision. He said that both of them involved findings which failed to reflect properly the perceptions of the Soul group and they either ignored that group or elided it with the unit group at some level.

So far as paragraph 42 is concerned Mr Mellor said that paragraph failed to reflect the two groups (and in particular the Soul group) and should have made findings in relation to visual similarity for each group. The Soul group was likely to perceive a higher level of visual similarity than the unit group because they already had “Soul” in mind. The relevant class of consumer (the Soul group) would see the word “Soul” and the other element, but would treat the “luxe” element as descriptive and as having less significance to the consumer. This paragraph is said at best to be a wrapped up conclusion which produces an unjustifiably low conclusion on visual similarity.

I agree that in this paragraph the Hearing Officer did not explicitly consider separately the same two classes of consumer as he considered in paragraph 44, but in my view he did not have to. His two classes in paragraph 44 were relevant in the context of what he was considering in that paragraph - conceptual similarity. His classes were based on perceptions of the meaning and concept of the word. It does not follow that it is appropriate to divide the average consumer into those classes when considering the visual similarities. All consumers are assumed to have seen the letter-shapes (as shapes) of the registered mark when considering the new mark. In terms of assessing pure visual similarity there is probably no room for two classes of perception, and even if, in theory, there might be, it is apparent that the Hearing Officer did not think that there was in this case. His approach is one that he was entitled to adopt. Proceeding from that point the conclusion that he reached was one that he was entitled to reach.

So far as paragraph 43 is concerned, Mr Mellor’s criticism was more muted. In his skeleton argument he accepted that the Hearing Officer did draw his paragraph 44 distinction, but said that an error was made in wrapping both classes up together as providing “a medium degree of similarity”. His case was that the first alternative hearing of the mark (“Soul-ucks”) would be the proper one to consider because of the assumption that the average consumer would have “Soul” in mind, and the ear hears what it expects to hear (see Arnold J in Aveda Corporation v Dabur India Ltd [2013] EWHC 589 (Ch)).

In my view there was no error in this paragraph. The Hearing Officer was carrying out the exercise he was obliged to carry out. He considered two possible perceptions, but found there was little between them in terms of aural similarity. There is nothing wrong with that. Mr Mellor could only make any headway in relation to this paragraph if he were able to establish that the “Soul-ucks” perception (whether as the sole correct perception, or as one of two) attracted a much higher degree of aural similarity than the Hearing Officer found, but that argument would involve inviting me to make a finding about similarity which substitutes my view for the Hearing Officer’s, and on an appeal that is not appropriate. It certainly cannot be said that the Hearing Officer’s view on the aural similarity of “Soul-ucks” is outside the scope of the views that the Hearing Officer was entitled to take.

The last criticism of the decision below turns on paragraph 52, in which the Hearing Officer expressed his overall conclusion on confusion. Mr Mellor’s first criticism is that the Hearing Officer considered too narrow a test when he considered (and dismissed) the idea that the mark presented itself as a sub-brand (“It does not strike me as a normal way in which a sub or variant brand will be presented.”). Mr Mellor submitted that this was a dangerous way of considering the matter because it was too narrow, or presupposed too much analysis on the part of the average consumer. The more appropriate question was to consider whether “the later mark simply adds a non-distinctive element to the earlier mark” - see L A Sugar Ltd v By Back Beat Inc Case BL-0/375/10 at paragraph 17(b).

The short answer to that particular point is that the Hearing Officer was considering a test proposed by SoulCycle’s counsel. Paragraph 50 of his decision records the submission as being:

“50.

Mr Baran’s submission here was that the average consumer would notice that the applied for mark began with the word “SOUL” and that they would consider the mark as a whole to be a variant or sub-brand of SOUL, with the goods sold under it being the “LUXE” or luxury part of the range.”

It is not suggested that the Hearing Officer misunderstood or mis-recorded the submission, so it must be taken as being the one made. Indeed, he goes on to record specific points made by counsel for Matalan which were intended to meet just that submission. He even rejected Matalan’s counsel’s submission that it was not open to Soulcyle to make its point because of an absence of evidence. All that being the case, it is not open to Mr Mellor now to criticise the Hearing Officer for adopting a wrong test and improperly narrowing the issues which fell to be considered. The decision that he reached on that particular test is one which was open to him and is not so wide of the mark (if it is wide of the mark at all) as to be impeachable on appeal.

Furthermore, it can be seen from paragraph 52 that the Hearing Officer did not stop there and he went on to consider matters which were probably closer to what Mr Mellor would say the Hearing Officer ought to have considered, because he went on to consider whether, and the extent to which, the word “Soul” in the applied for mark performed a distinctive role in the mark. Mr Mellor criticises his conclusion (that it did not perform that role) on the footing that once one was considering the perception of those in the Soul group, who by definition saw it as a separate word with a real meaning, then it inevitably followed that those people would see the words as performing a distinctive role. As he put it, once one has seen the word “Soul” and recognised it, and then understood that “Luxe” is a suffix connoting luxury, then the average consumer would obviously be confused and the inquiry is at an end. The Hearing Officer’s reasoning was too complicated and over-analytical. What the Hearing Officer had done was, again, to elide the two groups which he had previously separated. He also said that the Hearing Officer was at fault in not reminding himself of all the factors that should be taken into account in considering these matters, referring to White & Mackay at paragraphs 46 and 48.

All these criticisms fail. First, I do not think that any significance should be given to a failure to go through the factors listed in Arnold J’s reasoning process in the two paragraphs from White & Mackay. I do not think that the Hearing Officer was required to articulate all his conclusions in precisely the same way, especially as he was considering a particular form of submission from SoulCycle which did not require quite the same approach. If there were a reason for supposing that he had not taken factors into account then his failure to enumerate them might be of some significance, but even then it would be the apparent omission of factors which would be important rather than the absence of a listing of factors.

Second, he has not elided the two groups. His first sentence deals with the unit group, and he then moves on to consider the Soul group. What follows is his analysis of the perceptions of the Soul group. So there is nothing in his expression of his reasons which suggests that he was eliding them. Nor, in my view, has he unconsciously lost sight of his own objectives in keeping them separate, so he has not unconsciously elided them either.

But Mr Mellor’s complaint is probably not really that the groups had become elided, but that the Hearing Officer did not properly follow through how the the perception processes of the Soul group work. This is not a matter of elision; it is a matter of considering the relevant class properly. The real question is whether Mr Mellor is right to say that the Hearing Officer ought to have recognised the whole raison-d’être of the Soul group and say it was inevitable that their recognition of the word and the concept would mean that they would be confused, because all that “Luxe” added was a perception of luxury.

The Hearing Officer went about his assessment by first dismissing the idea that “Soul” performed an independent distinctive role because “the way it has been constructed puts paid to that”. That may be a finding to the effect that he would have expected to see two words before considering the concept of independent distinctive role, a feature in the leading authorities where the concept is deployed (White v Mackay, Bimbo v Ohim, Medion v Thomson and others), and the correctness of which proposition Mr Mellor challenged. But whether that is right or not, it is clear enough that the Hearing Officer did not think that word by itself would have been distinctive enough. That appears from his treatment of the composite word in the remainder of the paragraph, where he acknowledges the separate word but says that as part of the word it is not “highly distinctive”. Although considering a word as part of a longer word, and considering it as one of two words, are technically two different processes, and might lead to different conclusions, one can detect in the paragraph an overall conclusion that the word is just not enough. That, once more, is a conclusion that the Hearing Officer was entitled to reach and there is no basis for overturning it, or departing from it, on this appeal.

In the circumstances I dismiss this appeal.