Cheltenham Dentists Doctor Simon Moore and Doctor Timothy Rumney scored a significant victory in December 2007 in successfully registering a trade mark (shown in Figure 1 below) which included a crocodile logo, in the face of opposition from the owners of the Lacoste trade mark (shown in Figure 2 below).
Figure 1 Figure 2
The decision (an appeal against a Trade Marks Registry decision) attracted publicity in the general press and the specialist trade marks periodicals, albeit for slightly different reasons. The general press were enthusiastic about the success of a high street business fighting off what they portrayed as the oppression of a multinational company. The specialist trade mark press showed an interest in the case for the unusual application of specific rules on the comparison of two conflicting trade marks.
To understand each of these concerns and interpret the appeal decision it is important to be aware of the basis on which earlier registered trade mark owners can defeat later applicants seeking to register similar marks for similar sorts of goods or services. The particular UK Legislation states that a trade mark “shall not be registered 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 the likelihood of confusion on the part of the public which includes a likelihood of association with the earlier trade mark”.
The Courts have developed guidance on what constitutes “similarity” and what constitutes “likelihood of confusion” or “likelihood of association”. The key principle, established by case law in the last few years, is that to determine similarity between marks and likelihood of confusion being caused to consumers (i.e. by marks which are the subject of an application for registration made after other marks which are already on the register) a comparison must concentrate on the “visual, aural, and conceptual similarities” between the earlier and later marks and must be based on the “overall impression given by the marks, bearing in mind, their distinctive and dominant components” (because an average consumer normally perceives a mark as a whole and does not perceive to analyse its various details). The reference to “distinctive and dominant” components of marks typically leads to practitioners separating out, in the course of making a comparison, the descriptive from the distinctive elements of each mark to be compared. In this case, the trade marks to be compared (shown above) consisted of a simple logo (for Lacoste) on the one hand and a combined word and logo mark (for Doctors Moore and Rumney) on the other. Given the rules above, you would normally have expected (and, in fact, Lacoste argued) that the words element of the dentists’ mark (i.e. THE DENTAL PRACTICE) was purely descriptive of the dental services and should therefore be ignored (or, at least, paid only scant attention) in terms of making a comparison between the two marks.
In this case, although the authorities determined that the applicant’s trade mark consisted of the word and logo elements, as stated, and although the word element (i.e. THE DENTAL PRACTICE) was held to be descriptive, it (and not the more distinctive logo element of the mark, i.e. the crocodile) was held to be playing the dominant role. Accordingly, the crocodile device element of the dentists’ mark was not to be the main or only focus in the comparison with the Lacoste crocodile. The proper comparison with the Lacoste crocodile was to be drawn with both the word element (THE DENTAL PRACTICE) together with the logo element.
The decision by the Trade Marks Registry Hearing Officer, at first instance, was that there were clear differences between the marks. Even if a comparison had been made simply between the logo elements (which was not the approach to take) there were still, in the Hearing Officer’s view, significant differences between the marks on that basis alone (“including that the reptile in the applicant’s mark was facing to the front/right, had just one eye and its mouth was closed”, whereas the Lacoste crocodile was facing to the side with an open mouth and both eyes could be seen). When taking into account the word element of the dentists’ mark, it was clear that there were even more differences that would serve to differentiate the marks. Accordingly the Lacoste opposition seemed to be on tenuous ground.
A further rule of comparison is that marks must be viewed in the context of the goods/services against which they are registered. The so-called “Interdependence principle” states that where there is a greater degree of similarity between the goods/services in suit then the opponent needs to demonstrate a lower level of similarity between the marks for the objection to be successful. Here Lacoste was registered for medical services and the Hearing Officer considered that these were identical to those for which the two dentists in Cheltenham were seeking registration. Thus, even though the threshold to be overcome by Lacoste in proving similarity of the marks was relatively low, the decision went against them on the reasoning given above.
It has to be realised that Lacoste had not helped its case. Whilst pleading that the dentists’ marks fell foul of the particular legislative provision outlined above, they had also argued (under another provision in the Trade Marks Act 1994) that their logo had sufficient reputation whose distinctive character would be adversely affected by the existence of a similar mark. Unfortunately, the hearing officer’s unchallenged findings were that Lacoste’s evidence of its reputation did not make clear to which of several trade marks sales figures had related and that the Lacoste mark had not been used in relation to medical (or dentistry) services at all. This was sufficient for the hearing officer to decide that Lacoste was not entitled to “an enhanced penumbra of protection”.
As the system of registration of trade marks is designed to prevent confusion in the market place and, in particular, to assist the public in identifying where goods/services come from, the decision represents a triumph for common sense. This is on the basis that an average patient viewing the dentists’ trade mark would not be confused into thinking that the dental services were being provided by Lacoste or assume that the multinational clothing brand was the same brand as that which the Cheltenham dentists were seeking to register.
One question that Trade Marks adjudicators traditionally ask themselves when assessing similarities between marks is whether or not goods/services sold under a mark in dispute are of a kind which consumers (here patients) would devote time to considering. It is often argued that luxury goods/services, for which consumers will pay more money, are scrutinised for longer by consumers than cheaper goods/services. This in turn indicates that the differences between the marks in suit need to be very significant before an adjudicator will find for an application. It is therefore interesting to note that on appeal the Judge decided as follows:
“dental services are highly personal in nature, and often require significant discussion regarding suitable care and treatment which is provided by qualified practitioners. I considered that the average consumer will generally take great care in trying to find and then choose a suitable practitioner whether the treatments sort is medical or cosmetic”.
On this basis, the visual, aural and conceptual differences outweighed the similarities and the Judge took the view that there was no likelihood of confusion between the respective marks (even considered in relation to identical services).
What lessons should be learned by dental practitioners reading this case summary? At a basic level, the words of the Judge make clear that patients take care in finding themselves dentists. If a practice takes equal care in branding its services (in this case by the use of the combined logo and word mark) this can serve to attract patients and make it easier for the dental practice to distinguish itself in the community. It is therefore clear that trade marks can assist practitioners in making their services distinctive to their customers.
The second (and, arguably greater) lesson is that dental practitioners who choose to use branding devices of any kind should seek the advice of a lawyer who can offer expert trade mark advice. Lockharts is well placed to carry out clearance searches before a mark is used to try to ensure there is no conflict in the market place with other registered brand owners. We are also able to file applications on behalf of practitioners seeking to protect against the sorts of confusion that led to Lacoste’s action against the Cheltenham dentists.
While the ownership of a mark does not grant a right to use it, it does provide a successful defence via a UK trade mark within UK territory to infringement of another registered trade mark. This provides another reason to consider consulting a trade mark specialist as the consequences of being sued for infringement for use of a confusingly similar brand (without having a trade mark registration in place) is without doubt an expense that most practitioners will not be able to meet.
