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A UKIPO decision has been issued in relation to an unsuccessful application for a declaration of invalidity filed by Amazon Technologies, Inc. ("Amazon") against UK Trade Mark Registration No. 3404810 for the mark BEAM LIGHTING covering lighting fittings and related goods in Class 11 ("the Registration") in the name of Eurocables (Belfast) Limited ("Eurocables").
Amazon based the application for a declaration of invalidity on Section 47(2) of the Trade Marks Act 1994 relying on a likelihood of confusion between the Registration and its earlier UK Trade Mark Registration No. 00917972337 for the mark MR BEAMS covering apparatus for lighting, floodlights, spotlights, wall lights, light bulbs and related goods in Class 11 ("the Earlier Mark").
The case highlights that caution should be taken when relying on previous decisions to support a finding of a likelihood of confusion in trade mark proceedings where the previous decisions relate to different goods and services to those at issue.
Comparison of the goods
The Hearing Officer considered that the goods covered by the Registration were encompassed by one or more of the broad terms namely, "apparatus for lighting", "lighting fixtures" or "lighting apparatus, namely lighting installations" covered by the Earlier Mark, meaning that they were identical under the Meric principle.
Average consumer
Amazon argued that for the majority of the goods which were purchased by ordinary consumers, there would be an average level of attention whilst Eurocables argued that the level of attention would be slightly more than average for domestic consumers and higher than average for commercial consumers. The Hearing Officer defined the average consumer as an individual member of the public or a business which would scrutinise the aesthetic attributes of the lighting as well as its practical functionality. The level of attention during the purchasing process was held to be medium for members of the public and "at the beginning of the high range" for business consumers.
Comparison of the marks
Visually, the Hearing Officer found the marks to be similar to a medium degree given that they both contained the word element BEAM. The phonetic similarity was also found to be a medium degree given that the marks had a similar number of syllables.
Conceptually, Amazon argued that presence of the title MR in the Earlier Mark did not change the meaning of the word element BEAMS and relied on an earlier UKIPO decision (O/601/19 MISS DOPE). The Hearing Officer held that both marks share the fundamental concept of beams, or a beam, of light, but that the mark MR BEAMS also gave rise to the concept of a man whose stock-in-trade is goods that generate beams of light/lighting.
The marks were considered to have a medium degree of conceptual similarity.
Likelihood of confusion
The Hearing Officer further addressed Amazon's argument that the title MR in the Earlier Mark was non-distinctive by stating that the Earlier Mark formed a unit and the average consumer would perceive the mark as mentioned above, as a man whose stock-in-trade is alluded to as lighting. The conceptual differences between the Earlier Mark and the Registration were sufficient to result in no likelihood of direct confusion.
In relation to the assessment of the likelihood of indirect confusion, Amazon argued that it was commonplace from the title MR to be dropped when referring to a name and that consumers, when faced with the Registration, would assume that the title MR had been dropped given that it was a natural and logical brand extension. Amazon referred to O/601/19 MISS DOPE again which found that the addition of the word MISS at the front of the word mark DOPE was a natural and logical brand extension of the word mark DOPE in the clothing sector. The Hearing Officer held that use of titles in the clothing sector provided a logical brand extension, i.e. a clothing range directed at men using the title MR. Whilst the title MR could be considered non-distinctive, the Hearing Officer was not convinced that MR BEAMS would be perceived as a brand extension of BEAM LIGHTING in relation to the goods, noting that there was also a difference in the singular versus plural of BEAM and BEAMS in the marks, and found no likelihood of indirect confusion.
The Hearing Officer rejected the application for a declaration of invalidity against the Registration and ordered Amazon to pay costs of £1600 to Eurocables.
Comments
This case raises important considerations when determining whether to pursue trade mark opposition or invalidation proceedings against a later mark which arguably contains a non-distinctive element. Earlier rights holders and trade mark practitioners should consider what branding consumers in the relevant sector(s) are accustomed to in order to determine whether the addition of a non-distinctive element, such as a title, to a mark would cause a likelihood of confusion.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
