Trade Mark Invalidation - Revive A Phone Ltd v WeFix

Jane Lambert

Chancery Division, Intellectual Property List (Mr Ian Karet) Revive A Phone Ltd v WeFix [2022] EWHC 2195 (Ch) (19 Aug 2022)

This was an appeal against the decision of the hearing officer, Ms Rosie Le Breton, of 9 Sept 2021 invalidating the word mark WEFIX and the blue and white device mark that appears above. The appeal came on before Mr Ian Karet on 30 June 2022.  By his judgment of 19 Aug 2022, the learned deputy judge dismissed the appeal and upheld the hearing officer's decision (see Revive A Phone Ltd v WeFix [2022] EWHC 2195 (Ch) (19 Aug 2022)).

Ms Le Breton invalidated those trade marks under s.47 (2) of the Trade Marks Act 1994. That subsection provides that the registration of a trade mark may be declared invalid on the ground that there is an earlier trade mark in relation to which the conditions set out in s.5 (1), (2) or (3) obtain unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.  The application to revoke the marks relied on s. 5 (2) (b) of the Act which prevents the registration of a mark if because "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 on the part of the public, which includes the likelihood of association with the earlier trade mark." The earlier mark, in this case, was the orange, white and black device mark that appears above.

The proprietor of the invalidated marks contended that the hearing officer had erred for the following reasons. First, she had failed to take proper account of the fact that the common element between the marks was the words WE FIX, which is descriptive and of very low distinctiveness for the goods and services in issue. That should have influenced her analysis of the level of visual, aural and conceptual similarity between the respective pairs of marks. Secondly, she had failed properly to apply the principle that where the only similarity between the respective marks consists of a common element which has low distinctiveness, that will not normally give rise to a likelihood of confusion. Had she undertaken a proper analysis, she would have found no likelihood of confusion between the marks and would not have invalidated the contested marks.

As to the first ground, Mr Karet found no error of principle.  He said at paras [31] and [32] of his judgment:

"[31]. The Decision does, as the Appellant says, make an initial comparison of the marks and then deal with the distinctive character of the Earlier Mark. However, the Hearing Officer then brought together all of the matters she had considered under the heading “GLOBAL ASSESSMENT”. She had by then concluded that the Earlier Mark was inherently distinctive to a low degree. This approach allowed her to deal with the low level of distinctiveness of the element WE FIX in the Word Mark and the Logo Mark which followed as a consequence of her earlier findings. Neither the decision in JAC Travel Ltd’s Application nor the Appellant’s skeleton argument for the cancellation hearing approached the matter in this order.
[32] The Hearing Officer first made a comparison between the marks and then applied to that her finding of the level of distinctiveness of the Earlier Mark so as to anchor her analysis. She found that the Earlier Mark was distinctive to a low degree, and that underpinned her conclusions on the similarity between the marks."

Turning to the second ground, Mr Karet found that the hearing officer had conducted the global assessment properly.   He said:

"[38] In respect of the Word Mark, she noted that the Earlier Mark was inherently distinctive to a low degree and that the distinctiveness of the common element WEFIX was low. She therefore made the comparison required by Nicoventures. In her view there was “very little for the consumer to grasp onto to differentiate between the marks”.
[39] In considering the Logo Mark, the Hearing Officer said that the Earlier Mark held a low degree of distinctiveness as a whole and that the distinctiveness of the common element was also undoubtedly low. She concluded that there would be no direct confusion as the consumer would notice and recall the differences between the marks.
[40] Despite the low distinctiveness described she found that there would be indirect confusion in this instance because consumers would think the contested mark represented an updated version or variant of the earlier logo, or vice versa."

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