Registering a Trade Mark? Are You Sure No One Else Got There First?

When registering a trade mark, it is vital to conduct a comprehensive check that you are not treading on the toes of others who may have got there before you. The point was made by a High Court case concerning two technology repair companies that applied to register similar marks just a few months apart.

A company applied to register as trade marks the elided word 'WEFIX' and a blue-coloured logo featuring the same word accompanied by a stylised bolt of lightning. The application was opposed by another company operating in a similar field which had previously registered an orange and black logo that incorporated the word 'WeFix'.

In refusing the application, a hearing officer appointed by the Registrar of Trade Marks found that the marks applied for were aurally identical to the earlier mark. The word mark was, to a high degree, visually similar to the earlier mark and the logo mark was similar to a medium degree. In conceptual terms, the word mark was identical to the earlier mark and the logo mark highly similar.

She acknowledged that, in the eyes of the average consumer, the earlier mark had a low degree of inherent distinctiveness. However, in finding that there would be a risk of direct confusion between the word mark and the earlier mark, she noted that consumers would have very little to grasp onto in differentiating between them.

There would, she found, be no direct confusion between the lightning-adorned logo mark and the differently coloured earlier mark in that consumers could be expected to notice and recall the differences between them. There was, however, a risk of indirect confusion because consumers might assume that the logo mark represented an updated version or variant of the earlier mark, or vice versa.

In dismissing the applicant's appeal against the hearing officer's decision, the Court noted that she had conducted a global assessment of the level of similarity between the marks and the risks of consumer confusion. Her carefully reasoned conclusions displayed no error of principle and did not warrant the Court's interference.

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