In BL O/0668/24, the appointed person upheld the UK Intellectual Property Office (UKIPO) decision to reject the oppositions filed by Group Lotus Limited against three UK trade mark applications filed by Motus Group (UK).
Background
On 1 February 2021, Motus filed three trade mark applications for MOTUS GROUP, MOTUS GROUP (UK) LTD and MOTUS GROUP UK LTD, and MOTUS UK, covering commercial vehicles in Class 12 and related services in Classes 35, 36, 37 and 41. Based on its earlier LOTUS trademarks, Lotus opposed under Sections 5(2)(b) and 5(3) of the Trade Marks Act 1994, claiming a likelihood of confusion and detriment to – and unfair advantage of – its earlier marks’ reputation.
The hearing officer found that the marks were not similar enough, particularly given the absence of any conceptual similarity; therefore, the oppositions failed.
Decision
Lotus appealed on seven different grounds, but the appeal was rejected in its entirety. Before considering the grounds, the appointed person considered the high bar set to justify an interference in the first-instance decision.
Failure to properly consider post-sale confusion
The appointed person stated that post-sale confusion is only relevant where the information given to the third party viewing a mark post-sale is different from that given to the original purchaser. The scenarios that Lotus provided were not examples of post-sale confusion since the public, when seeing the marks on a passing or parked vehicle, for example, would see the same information that they would see if they encountered the vehicle and trade mark in a sales environment. The fact that the public might pay less attention outside of a sales environment was irrelevant.
Comparison of marks considered the non-distinctive terms "Group" “UK” and "Ltd"
The hearing officer was correct in considering the corporate status in the comparison, since, despite being non-distinctive, those elements are not negligible and will not go unnoticed by consumers.
Failure to properly consider inherent distinctiveness
As the earlier marks were found to have an enhanced distinctive character, a finding of a higher level of inherent distinctiveness would not have impacted the outcome.
Excessive weight given to the difference between the first letters of the marks
This claim was dismissed as a value judgment, which is not open to challenge on appeal.
Incorrect assessment of indirect confusion
Given the finding that there was no conceptual similarity, it would be difficult to see how a change in the first letter of the mark would be a logical brand extension. As the LOTUS marks would not have been brought to mind when consumers were faced with the MOTUS marks, this negated indirect confusion.
Incorrect comparison of the respective goods in the context of Section 5(3)
The appointed person did not interfere with the hearing officer’s finding that “high-performance motor cars”, the goods for which Lotus had proved reputation, were not identical to commercial vehicles as the decision was rationally supportable.
Failure to consider each of the dilution harms under Section 5(3) individually
Given the overall dissimilarity of the marks, even if consumers were to create a link between them, that link would be a fleeting one which would be quickly dismissed. This would not give rise to the injuries under Section 5(3).
Comment
The decision highlights that a lack of conceptual similarity can counterbalance visual and aural similarities between the signs, preventing a likelihood of confusion or a link between the marks being formed.
It also reiterates that for one of the injuries under Section 5(3) to occur, a concrete link must be formed between the later mark and the earlier mark. A fleeting link which will be quickly dismissed, will not suffice.
Finally, the decision confirms that post-sale confusion can only arise if the marks and products appear to third parties in a different way from that in which they appear in the sales environment, causing those third parties to confuse the marks. Mere lack of attention in a post-sale scenario does not give rise to post-sale confusion.
This article first appeared in WTR Daily, part of World Trademark Review, on 28 August 2024.
For more information or if you have any questions, please contact Emily Roberts, Holly Webb or Tedi Halili or another member of the IP team.
Subscribe to our Concept newsletter and receive the latest intellectual property legal updates, news and event invitations direct.