In the realm of the registered word mark, precise wording is critical. A word mark registers only words or letters as a trade mark but does not address how the word or words are presented stylistically. A word mark application can fail if it is purely descriptive or can be opposed by the holder of an existing similar word mark if it also covers identical or similar goods or services.

The case of Shine TV Limited vs SKA Trading Ltd illustrates the nuances and provides useful guidance for those applying to register a word mark.

Background

Shine TV Limited (‘Shine’) appealed against a UK IPO Hearing Officer’s dismissal of its opposition to SKA Trading Ltd.’s (‘SKA’) application for the word mark ‘MISTER CHEF’.

The appeal was raised because of Shine’s four existing word marks ‘MASTER CHEF’ and ‘MASTERCHEF’ (and two further variations of this). The word mark from SKA and three word marks from Shine were applied to be registered in class 21 – ‘various kinds of cookware’.

Shine’s opposition was raised on two grounds: (i) the new mark was similar to an earlier trade mark and concerned identical or similar registrable goods or services, creating a likelihood of confusion of the public; and (ii) the new mark was identical with or similar to an earlier trade mark and would take unfair advantage of, or be detrimental to, the distinctive character of the earlier trade mark.

The original decision

The Hearing Officer originally dismissed Shine’s opposition because, although visually similar, the word marks were deemed to be conceptually different. This is because ‘MASTER CHEF’ referred to a skilled chef, whereas ‘MISTER CHEF’ had a connotation given by the adult male title ‘mister’ which did not suggest skill or anything else comparable. The Hearing Officer considered this definition of ‘master’ was the appropriate one because it is the definition which the public would be most likely to adopt.

The Hearing Officer also noted the visual difference was at the start of the phrase (the second letter), which would be more likely to be noticed by a member of the public than a difference later in the phrase.

The appeal

The crux of Shine’s appeal was a contention the Hearing Officer failed to consider two other relevant definitions of the word ‘master’ in his decision, namely: (i) “a man in charge of an organisation or group…” and (ii) “… a title prefixed to the name of a boy not old enough to be called ‘Mr’”. Shine relied on the latter given its clear connection with the word ‘mister’ as used in SKA’s word mark.

The Court found the contention master could be both a title for an adult male or a boy was incorrect. It was only a title for a boy, being rather a job role for certain adult males.

The Court also noted it was clear the Hearing Officer had considered other definitions and consulted the Oxford English Dictionary. There was no requirement for the Hearing Officer to record in writing every element of his thinking and decision.

The second ground for appeal was the Hearing Officer’s false assumption of ‘MASTER CHEF’ meaning a top chef and may have been swayed to this assumption by the reputation of the television programme MasterChef. The Court rejected this as there was no evidence of the Hearing Officer considering this programme or other basis to draw a negative inference.

Key takeaways

Forming a novel or secondary meaning opposition to a trade mark application can often prove fruitless. Both the initial Hearing Officer and Appeal Court will favour the word mark meaning which is objectively most relevant in the circumstances. Additionally:

• Conceptual dissimilarity can overcome visual and aural similarity.
• Distinctiveness at the start of a word mark is a stronger factor of differentiation against existing word marks, rather than distinctiveness at the middle or end.
• A challenge of a hearing officer’s decision must rely on evidence of errors of law or fact inherent in the decision itself, rather than implied logic. This is because an appeal court reviews the original decision rather than making it again.

Hamlins can help you assess whether a word mark is likely to be registrable and evaluate the likelihood of existing word marks successfully opposing your application. We can also help determine whether a product is likely to qualify for other trade mark and intellectual property protection. We can assist with UK, EU and international trade mark applications to adopt a global perspective for your brand protection strategy.

If you would like to find out how we could help you, please contact Matthew Pryke.