Off to see about my trade mark

A recent case before the UK Intellectual Property Office concerned an invalidity action by Epoq Group plc (“the applicant”) against the registered word mark OFF TO SEE MY LAWYER in the name of Trading Terms Ltd (“the registered proprietor”).

The hearing officer found that there was no likelihood of confusion between the applicant’s earlier registered mark MY LAWYER and the registered proprietor’s mark, even where the goods and services were identical.

Background

In November 2009, Joanna Tall, a solicitor and director of the registered proprietor, started a virtual law firm aimed at female entrepreneurs setting up in business. Pre-prepared legal documents can be purchased via its website at Offtoseemylaywer.com, with 30 minutes of free advice from a lawyer included with every document purchased.

On 28 May 2010, the registered proprietor filed a UK trade mark application for OFF TO SEE MY LAWYER, which was duly registered on 24 September 2010 in respect of the following:

• Class 9 – recorded media, computer software, software downloadable from the internet, downloadable electronic publications, web applications;
• Class 16 – printed matter, paper and cardboard and goods made out of these materials, publications, brochures, manuals, leaflets, booklets, business cards, books, magazines, periodicals, reports, instructional and teaching materials, stationery, printed promotional materials, notepads, pens, pencils;
• Class 18 – umbrellas;
• Class 41 – arranging and conducting conferences, seminars and workshops, publishing and providing online electronic publications, translation services;
• Class 45 – legal services relating to company law and commercial law, provision of information and documents over the internet, preparation of reports and opinions all relating to company law and commercial law.

The applicant launched the website MyLawyer.co.uk in November 2008, determined to transform the way in which legal services are delivered, principally by providing legal documents via its website.

On 15 March 2012, the applicant sought to have the registered proprietor’s trade mark declared invalid under s 47(2) of the Trade Marks Act 1994 (“TMA”), on the basis that there was a likelihood of confusion in relation to its earlier registered trade mark MY LAWYER for a wide range of goods and services, the following of which the applicant relied on:

• Class 9 – computer software including packaged software, application software, software provided from a computer network, publications downloaded in electronic format from the internet, computer software supplied from the internet;
• Class 41 – education and training services, publishing, arranging and conducting colloquiums, conferences, seminars, symposiums, workshops and exhibitions;
• Class 45 – legal services.

Parties’ pleadings

The applicant argued that OFF TO SEE MY LAWYER should be declared invalid under s 5(2)(b) of the TMA, as it was similar to the applicant’s earlier trade mark and was registered for similar goods and services. As such, it was argued that there was a likelihood of confusion. With the exception of “umbrellas” in class 18, all of the goods and services registered under OFF TO SEE MY LAWYER were attacked. In its counterstatement, the registered proprietor denied such claims and argued that the trade marks were sufficiently different to avoid confusion. Both parties filed evidence in support of their submissions and a hearing took place on 20 June 2013.

The decision

The hearing officer found for the registered proprietor. The applicant’s invalidity action was refused. The hearing officer’s reasoning follows:

The average consumer

It is settled law that the test for determining the likelihood of confusion is whether a substantial portion of the relevant public would be confused. The average consumer in this case was both the professional customer such as the business sector, and also the public at large.

Comparison of the goods and services

With the exception of the contested term “translation services”, the hearing officer was guided by the leading authority Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 in determining all the goods and services to be either identical or highly similar. The interdependency principle was fully considered, and the following guidance from Jacob J in Avnet Incorporated v Isoact Ltd [1998] FSR 16 was also taken into account in reaching this conclusion:

“In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”

Comparison of the marks

The hearing officer invoked Sabel BV v Puma AG [1998] RPC 199on the principles to be applied when making a comparison of marks. Sabel provides that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The same case also explains that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks, bearing in mind their distinctive and dominant components. Accordingly, it would be wrong to artificially dissect the trade marks, but it is necessary to take into account any distinctive and dominant components.

The hearing officer considered that MY LAWYER did not play an independent and distinctive role. OFF TO SEE MY LAWYER is a completed phrase with a different meaning within which MY LAWYER is unlikely to be picked out in isolation.

Although the presence of the words MY LAWYER in each of the trade marks may create an obvious point of visual and aural similarity, this similarity is significantly reduced by the presence of the words “OFF TO SEE”, which would not go unnoticed and which were considered to have an important visual and aural impact. Invoking Aldi GmbH & Co KG v Office for Harmonization in the Internal Market (Trade Marks and Designs) (Case T-505/11), these three additional words ensured that OFF TO SEE MY LAWYER was likely to be seen and understood as a complete phrase that created a concept quite different from MY LAWYER. Accordingly, the relevant public would not believe them to be economically linked and therefore there was no likelihood of confusion.

Comment

The hearing officer determined that the trade marks created a different overall impression. As there are clear differences between them, the relevant public can accurately distinguish the applicant from the registered proprietor, even where the goods and services are considered identical.

This case is a useful reminder of the considerations relevant to the “likelihood of confusion” test under s 5(2)(b) of the TMA. The assessment of confusion must be balanced, with correct weight given to the visual, aural and conceptual similarities, which must include examining each of the marks in question as a whole. This does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components.