Trade Marks: Asia Standard Management Services Ltd v Standard International Management LLC

Jane Lambert

Chancery Division (Mr Justice Marcus Smith) Asia Standard Management Services Ltd v Standard International Management LLC [2020] EWHC 28 (Ch) (25 Feb 2020)

This was an appeal from the decision of Mr George Salthouse dated 6 March 2019 in Re ASIA STANDARD, Asia Standard Management Services Ltd v Standard International Management LLC BL O/125/19, 6 March 2019 allowing an opposition against the application by Asia Standard Management Services Limited ("Asia") for the registration of the above marks for all the goods and services applied for except letterheads, forms, printed, notebooks and business cards in class 16 and the organization of sports competitions in class 41

Asia appealed on the following grounds:

"(1) Appeal Ground 1 The Hearing Officer erred in principle by failing to consider whether there was a likelihood of confusion in respect of each sufficiently homogeneous category or group of goods or services in issue.
(2) Appeal Ground 2 The Hearing Officer erred in reducing the question of likelihood of confusion in respect of goods and services other than "providing casino facilities (gambling)" to a mathematical application of two variables: (i) the degree of similarity of the respective goods and/or services and (ii) the degree of attention to be paid by the average consumer because as a result he failed to take account of the fact that the average consumer for different categories or groups of goods or services would be different and/or would have a different perception.
(3) Appeal Ground 3 Accordingly, the Hearing Officer erred in extrapolating his decision in relation to "providing casino facilities (gambling)" to all the categories of goods and services in issue without considering them separately.
The fourth ground of appeal is what Asia Standard call the "inevitable consequence" of the Hearing Officer's approach:
(4) Appeal Ground 4 Further, the Hearing Officer failed to give any or any adequate reasons for his decision other than in relation to "providing casino facilities (gambling)".

The appeal was heard by Mr Justice Marcus Smith on 16 Dec 2019.  He delivered judgment in Asia Standard Management Services Ltd v Standard International Management LLC [2020] EWHC 28 (Ch) on 25 Feb 2020.  Given the extent to which those grounds of appeal interrelated, his lordship considered all those grounds of appeal together.

At paragraph [8] of this judgment, Mr Justice Marcus Smith said: "section 5 (2) (b) of the Trade Marks Act 1994 involves two elements: the degree of similarity between the goods in issue; and the existence of a likelihood of confusion." He referred to the following passage of Mr Geoffrey Hobbs QC's judgment in Re SEPARODE, Evonik Degussa GmbH v L G Chem Ltd. BL O/399/10, 10 Nov 2010:

"The basic question for determination is whether X times Y equals Z, with X being the degree of similarity between the marks in issue, Y being the degree of similarity between the goods in issue and Z being the existence of a likelihood of confusion. The decision-taker must give as much or as little significance to the visual, aural and conceptual differences and similarities between the marks in issue as the average consumer of the goods in issue would normally have attached to them at the date of the request for protection. The determination must be made with reference to each of the different species of goods listed in the opposed application for registration; if and to the extent that the list includes goods which are sufficiently comparable to be assessable for registration in essentially the same way for essentially the same reasons, the decision-taker may address them collectively in his or her decision."

The judge noted that generally, "it is appropriate to consider the merits of an opposition on a good by good or service by service basis, accepting that it may be possible to group some goods/services together for these purposes because they are homogeneous" but in the judge's view, Mrt Salthouse did not do so in this case because there had been a similar case between the same parties upon which Mr Salthouse seemed to have relied.

His lordship was not happy with the hearing officer's approach:

"Taken in the abstract, without regard to the Earlier Decision, it is difficult to defend the Hearing Officer's approach. His analysis, as I have set it out, begs the most enormous question: namely, the basis upon which he could find that a determination in relation to casino facilities could be determinative in relation to all other goods/services."

However, it also seemed to the judge that, on the specific facts of this case, the hearing officer was entitled to take a broad-brush approach.  Referring to Virgin Enterprises Ltd v Virginic LLC   [2019] EWHC 672 (Ch), Mr Justice Marcus Smith directed himself that the court should not interfere with a hearing officer's decision unless it contains a distinct and material error of principle or is clearly wrong. The mere fact that he might have approached matters differently, or even have reached a different conclusion to that of the hearing officer, was not enough to permit the appeal to succeed.  In the special circumstances of this case where the second application for registration of very similar marks to earlier marks whose registration was refused, the judge was not persuaded that Mr Salthouse's approach and decision contained a distinct and material error of principle or was clearly wrong.  He, therefore, dismissed the appeal.

The case law of the Court of Justice and indeed decisions of our own courts and Trade Marks Registry tribunals over the years suggests that each opposition or invalidity application under s,5 (2) or infringement claim under s.10 (2) requires a flexible facts-based approach   The conjunction "because" is in the legislation for a reason.   The tribunal has to decide whether the identity or similarity of marks in the light of the identity or similarity of goods or services results in a likelihood of confusion including a likelihood of association with an earlier mark. The question should not be approached mechanistically and the similarity of facts in an earlier case does not excuse the tribunal from conducting its own inquiry. Mr Salthouse may well have arrived at the right conclusion but that does not relieve the appeal court from approaching the issue de novo.

Anyone wishing to discuss this case or oppositions under s.5 (2) generally should call me on 020 7404 5252 during office hours or send me a message through my contact page.