Tripping: TripAdvisor v Handsam
Handsam Ltd. describes itself as "a leading provider of online management systems, consultancy services and advice to both the business and education sectors." Its specialisms include health and safety management, policy writing and advice in all areas, security, fire, training and data protection. It has recently extended its online services to include a school trip planning system. Its systems claim to offer its clients guaranteed compliance, audit trails or chain of evidence collection and peace of mind for leaders, directors and managers.
By an application dated the 15 July 2014 Handsam applied to register the following sign as a trade mark for the following goods and services.
The specified goods and services were:
Class 16: Magazines; Books; Leaflets; Printed guides; Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.
Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.
Class 41: Advisory services relating to education; Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.
Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.
The application was opposed by TripAdvisor LLP under s.5 (2) (b), s. 5 (3), s. 5 (4) (a) and s. 3 (6) of the Trade Marks Act 1994. TripAdvisor relied on its registration of three Community (now European Union) trade marks:
The specified goods and services were:
Class 38: Providing on-line electronic bulletin boards for transmission of messages among computer users in the field of travel.
Class 39: Travel information services; providing an online computer database in the field of travel information services; providing online travel information in the form of reviews of travel service providers, travel destinations, and local attractions.
Class 42: Computer services, namely, providing search engines for obtaining travel data on a global computer network; hosting a website containing reviews of hotel accommodations and travel service providers, travel destinations, and local attractions.
Class 43: Providing lodging information services; providing online accommodation information in the form of reviews of hotel accommodations
The opposition came on before Mr Oliver Morris who delivered his decision on the 15 Dec 2016 (see Re Handsam Ltd's Trade Mark Application, TripAdvisor LLP v Handsam Ltd. BL 0/590/15 15 Dec 2015). Mr Morris allowed the opposition in respect of magazines, books, leaflets, printed guides in c lass 16 and advisory services relating to the organisation of events, advisory services relating to the organisation of field trips and visits in class 41 but rejected it in respect of everything else.
In reaching his decision on s.5 (2) Mr Morris reminded himself of the case law of the Court of Justice of the European Union and the English Courts, He compared the goods and services for which Handsam had sought to register its sign with those for which TripAdvisor's marks had been registered. He considered the attention that would be given to the signs sought to be registered by the average consumer. He compared Handsam's sign with each of the earlier marks and assessed the likelihood of confusion.
As to s.5 (3), the hearing officer considered the decisions of the Court of Justice in General Motors Corp v Yplon SA(Chevy) [1999] ETMR 122 and [2000] RPC 572 and Intel Corporation Inc v CPM (UK) Ltd. [2009] ETMR 13, [2009] Bus LR 1079, [2009] RPC 15, [2008] EUECJ C-252/07, [2008] ECR I-8823 as to the degree of similarity or link between the mark to be registered and the earlier mark. In respect of the goods and services that he had not found to be similar to those for which the mark had been registered he could find no link and held that the opposition failed on that ground alone.
He also considered the opposition under s.5 (4) and found that it added nothing to the claim under s.5 (2). As to the allegation of registration in bad faith he concluded:
"It cannot be an act of bad faith, absent any other circumstance, to apply to register a trade mark that is neither confusingly similar to the opponent’s earlier mark, which does not take unfair advantage of, or is not detrimental to, the distinctive character or the repute of the earlier trade mark, or which does not misrepresent itself as being associated with the opponent’s goodwill. To borrow a saying, this is a case of no harm, no foul."
TripAdvisor appealed to the Chancery Division against the decision. It complained that the hearing officer had failed to conduct the necessary global assessment required by s. 5 (2) and that he had incorrectly applied the case law when considering the link necessary to bring the opposition within section 5 (3). The case came on before Mr Justice Warren who dismissed the appeal in Tripadvisor LLC v Handsam Ltd [2016] EWHC 1659 (Ch) (7 July 2016).
As to the appeal under s.5 (2), the judge understood the principal complaint to be that the hearing officer had
"carried out an improperly truncated global assessment in respect of the allowed goods and services, which resulted in relevant factors being entirely, omitted, not simply being given too little weight."
TripAdvisor's grounds of appeal identified number of instances where such shortcomings were said to have occurred though its skeleton argument was said to have focused on only two of them. One of those alleged shortcomings was that the hearing officer concentrated on the differences between TripAdvisor's mark and Hardsam's instead of the similarities. His Lordship considered that criticism to be misplaced. In the judge's view the hearing officer was entitled to find that the differences between the marks were ample to avoid the marks from being directly mistaken for one another.
As to the appeal under s.5 (3) Mr Justice Warren concluded at para [70]:
"(i) First, Mr Morris effectively concluded (see [76]) that the use of the Handsam mark would not take unfair advantage of, or be detrimental to, the distinctive character or the repute of TripAdvisor's marks. Those were not his precise words, but it is clear that he was addressing the last part of section 5(3), making a finding that there was no detriment.
ii) Secondly, I am of the view that, in reaching his decision concerning the absence of the necessary link in relation to the allowed goods, Mr Morris did not make any distinct and material error of principle; further, he was not clearly wrong to reach the conclusion which he did, indeed, I would have reached the same view."
Both decisions are worth reading but the painstaking decision of the hearing officer on every possible point is likely to be the more useful for practitioners. Mr Morris reviewed the jurisprudence on s.5 (2), (3) and (4) and s.3 (6) very carefully and I have already incorporated his reasoning on bad faith into an opinion. It is in fact very difficult to understand Mr Justice Warren's judgment without a very close reading of Mr Morris's decision.
Should anyone wish to discuss this case note or trade mark oppositions in general he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.
By an application dated the 15 July 2014 Handsam applied to register the following sign as a trade mark for the following goods and services.
The specified goods and services were:
Class 16: Magazines; Books; Leaflets; Printed guides; Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.
Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.
Class 41: Advisory services relating to education; Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.
Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.
The application was opposed by TripAdvisor LLP under s.5 (2) (b), s. 5 (3), s. 5 (4) (a) and s. 3 (6) of the Trade Marks Act 1994. TripAdvisor relied on its registration of three Community (now European Union) trade marks:
- CTM 6441381
- CTM 11884137, and
- CTM 6989404
Under CTM 6441381 TripAdvisor had registered the word TRIPADVISOR for the following goods and services:
Class 38: Providing on-line electronic bulletin boards for transmission of messages among computer users in the field of travel.
Class 39: Travel information services; providing an online computer database in the field of travel information services; providing online travel information in the form of reviews of travel service providers, travel destinations, and local attractions.
Class 42: Computer services, namely, providing search engines for obtaining travel data on a global computer network; hosting a website containing reviews of hotel accommodations and travel service providers, travel destinations, and local attractions.
Class 43: Providing lodging information services; providing online accommodation information in the form of reviews of hotel accommodations.
Under CTM 11884137 TripAdvisor had registered the word TRIPADVISOR for a wide range of services in classes 35, 41 and 45, which inclided “education” “education information” and various entertainment services.
Under CTM 6989404 TripAdvisor has registered the device for the goods and services that are listed below.
Class 38: Providing on-line electronic bulletin boards for transmission of messages among computer users in the field of travel.
Class 39: Travel information services; providing an online computer database in the field of travel information services; providing online travel information in the form of reviews of travel service providers, travel destinations, and local attractions.
Class 42: Computer services, namely, providing search engines for obtaining travel data on a global computer network; hosting a website containing reviews of hotel accommodations and travel service providers, travel destinations, and local attractions.
Class 43: Providing lodging information services; providing online accommodation information in the form of reviews of hotel accommodations.
Under CTM 11884137 TripAdvisor had registered the word TRIPADVISOR for a wide range of services in classes 35, 41 and 45, which inclided “education” “education information” and various entertainment services.
Under CTM 6989404 TripAdvisor has registered the device for the goods and services that are listed below.
The specified goods and services were:
Class 38: Providing on-line electronic bulletin boards for transmission of messages among computer users in the field of travel.
Class 39: Travel information services; providing an online computer database in the field of travel information services; providing online travel information in the form of reviews of travel service providers, travel destinations, and local attractions.
Class 42: Computer services, namely, providing search engines for obtaining travel data on a global computer network; hosting a website containing reviews of hotel accommodations and travel service providers, travel destinations, and local attractions.
Class 43: Providing lodging information services; providing online accommodation information in the form of reviews of hotel accommodations
The opposition came on before Mr Oliver Morris who delivered his decision on the 15 Dec 2016 (see Re Handsam Ltd's Trade Mark Application, TripAdvisor LLP v Handsam Ltd. BL 0/590/15 15 Dec 2015). Mr Morris allowed the opposition in respect of magazines, books, leaflets, printed guides in c lass 16 and advisory services relating to the organisation of events, advisory services relating to the organisation of field trips and visits in class 41 but rejected it in respect of everything else.
In reaching his decision on s.5 (2) Mr Morris reminded himself of the case law of the Court of Justice of the European Union and the English Courts, He compared the goods and services for which Handsam had sought to register its sign with those for which TripAdvisor's marks had been registered. He considered the attention that would be given to the signs sought to be registered by the average consumer. He compared Handsam's sign with each of the earlier marks and assessed the likelihood of confusion.
As to s.5 (3), the hearing officer considered the decisions of the Court of Justice in General Motors Corp v Yplon SA(Chevy) [1999] ETMR 122 and [2000] RPC 572 and Intel Corporation Inc v CPM (UK) Ltd. [2009] ETMR 13, [2009] Bus LR 1079, [2009] RPC 15, [2008] EUECJ C-252/07, [2008] ECR I-8823 as to the degree of similarity or link between the mark to be registered and the earlier mark. In respect of the goods and services that he had not found to be similar to those for which the mark had been registered he could find no link and held that the opposition failed on that ground alone.
He also considered the opposition under s.5 (4) and found that it added nothing to the claim under s.5 (2). As to the allegation of registration in bad faith he concluded:
"It cannot be an act of bad faith, absent any other circumstance, to apply to register a trade mark that is neither confusingly similar to the opponent’s earlier mark, which does not take unfair advantage of, or is not detrimental to, the distinctive character or the repute of the earlier trade mark, or which does not misrepresent itself as being associated with the opponent’s goodwill. To borrow a saying, this is a case of no harm, no foul."
TripAdvisor appealed to the Chancery Division against the decision. It complained that the hearing officer had failed to conduct the necessary global assessment required by s. 5 (2) and that he had incorrectly applied the case law when considering the link necessary to bring the opposition within section 5 (3). The case came on before Mr Justice Warren who dismissed the appeal in Tripadvisor LLC v Handsam Ltd [2016] EWHC 1659 (Ch) (7 July 2016).
As to the appeal under s.5 (2), the judge understood the principal complaint to be that the hearing officer had
"carried out an improperly truncated global assessment in respect of the allowed goods and services, which resulted in relevant factors being entirely, omitted, not simply being given too little weight."
TripAdvisor's grounds of appeal identified number of instances where such shortcomings were said to have occurred though its skeleton argument was said to have focused on only two of them. One of those alleged shortcomings was that the hearing officer concentrated on the differences between TripAdvisor's mark and Hardsam's instead of the similarities. His Lordship considered that criticism to be misplaced. In the judge's view the hearing officer was entitled to find that the differences between the marks were ample to avoid the marks from being directly mistaken for one another.
As to the appeal under s.5 (3) Mr Justice Warren concluded at para [70]:
"(i) First, Mr Morris effectively concluded (see [76]) that the use of the Handsam mark would not take unfair advantage of, or be detrimental to, the distinctive character or the repute of TripAdvisor's marks. Those were not his precise words, but it is clear that he was addressing the last part of section 5(3), making a finding that there was no detriment.
ii) Secondly, I am of the view that, in reaching his decision concerning the absence of the necessary link in relation to the allowed goods, Mr Morris did not make any distinct and material error of principle; further, he was not clearly wrong to reach the conclusion which he did, indeed, I would have reached the same view."
Both decisions are worth reading but the painstaking decision of the hearing officer on every possible point is likely to be the more useful for practitioners. Mr Morris reviewed the jurisprudence on s.5 (2), (3) and (4) and s.3 (6) very carefully and I have already incorporated his reasoning on bad faith into an opinion. It is in fact very difficult to understand Mr Justice Warren's judgment without a very close reading of Mr Morris's decision.
Should anyone wish to discuss this case note or trade mark oppositions in general he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.
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