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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> The Wella Corporation v Alberto-Culver Company [2011] EWHC 3558 (Ch) (01 December 2011) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2011/3558.html Cite as: [2011] EWHC 3558 (Ch) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY
ON APPEAL FROM THE TRADE MARK REGISTRY
IN THE MATTER OF THE TRADE MARKS ACT 1994
AND IN THE MATTER OF THE UK TRADE MARK No 2491161 FUNKY SHAPER
7 Rolls Buildings Fetter Lane London EC4A 1NL |
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B e f o r e :
(Sitting as a Judge of the High Court)
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THE WELLA CORPORATION | Applicant/Claimant | |
- and - | ||
ALBERTO-CULVER COMPANY | Respondent/Defendant |
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101 Finsbury Pavement London EC2A 1ER
Tel No: 020 7422 6131 Fax No: 020 7422 6134
Web: www.merrillcorp.com/mls Email: [email protected]
(Official Shorthand Writers to the Court)
MS A EDWARDS-STUART (instructed by Baker & KcKenzie LLP) appeared on behalf of the Defendant
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Crown Copyright ©
HIS HONOUR JUDGE BIRSS:
hair care products; hair care preparations.
"(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 of the part of the public, which includes the likelihood association with the earlier trade mark."
non-medicated hair care preparations; namely, hairspray.
"The presence of the word SHAPER in the trade mark of Alberto leads inevitably to a good degree of visual, phonetic and conceptual similarity."
No criticism of that finding is made by the appellant nor I should say by the respondent.
39) In L'Oréal SA v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case C-235/05 P the CJEU stated:
'43 It must therefore be held that the applicant had misconstrued the concepts which govern the determination of whether a likelihood of confusion between two marks exists, by failing to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a complex mark possesses, which is concerned with its ability to dominate the overall impression created by the mark.
45 The applicant's approach would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question. If that were case, it would be possible to register a complex mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that complex mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations and not that that difference denoted goods from different traders.'
However, balanced against this, is the nature of a likelihood of confusion.
40) There is a presumption of validity in relation to the earlier trade mark. The evidence demonstrates that Wella's trade mark, at the date of application for registration of Alberto's trade mark and at the date of the application for invalidation, was directly descriptive of the goods. At the date of application for registration of Alberto's trade mark, Wella's trade mark lacked all distinctive character and the evidence of use does not establish that it had gained any distinctive character from use. The evidence leads to the conclusion that the average consumer will see the trade mark as being used to describe a particular type of product, a shaping product, emanating from Sebastian. A presumption of validity does not lead to a presumption of confusion because of similarity. A case under section 5(1) of the Act is based purely on fact: are the trade marks and goods identical? The fundamental premise of likelihood of confusion, section 5(2) of the Act, is that the average consumer of the goods concerned will believe that the parties are the same or economically linked as per the judgement of the CJEU in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc Case C-39/97:
'30. The answer to be given to the second part of the question must therefore be that there may be a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive even where the public perception is that the goods or services have different places of production. By contrast, there can be no such likelihood where it does not appear that the public could believe that the goods or services come from the same undertaking or, as the case may be, from economically-linked undertakings.'
The respective goods are identical. The respective trade marks have clear visual, aural and conceptual similarities. However, neither trade mark at the date of application for registration will be seen by the average consumer as indicating origin; consequently, the average consumer will not believe that the respective goods come from the same undertaking or economically linked undertakings. Consequently, there is not a likelihood of confusion and the grounds of invalidation under section 5(2)(b) of the Act are dismissed."
[Mr Landau's emphasis]