Publications > ‘LION OF GOD’

O/001/08 ARION, Professor Ruth Annand, 2 January 2008

This was an appeal from a decision of the Hearing Officer, Mr M. Reynolds, in which he dismissed an opposition brought by Procter & Gamble, owners of the Community Trade Mark ARIEL, against an application for the mark ARION. The appeal failed, the Appointed Person being unwilling to accede to what she considered amounted to a request to merely substitute the view of the Hearing Officer, which was based on uncontroverted principles, for that of Procter & Gamble.

Background

Application number 2385083 standing in the name of Floreal Limited, was for the mark ARION in respect of the following goods in Class 3:

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; washing powder, clothes washing liquid, laundry detergents, stain-removing preparations; fabric conditioner; scented preparations for use in ironing; laundry starch; household cleaning preparations.

The opponents, The Procter & Gamble Company, attacked the mark on the basis of CTM No. 199976, ARIEL, registered in Class 3 for:

Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps.

The main ground of opposition was Section 5(2)(b) of the Act:

(2) “A trade mark shall not be registered if because -
....
(b) 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.”

Only the opponent filed evidence, both parties made written submissions, but neither party requested an oral hearing. The Hearing Officer therefore decided the case based on the papers before him, deciding in the event against the opponent.

Why the Hearing Officer decided against Proctor & Gamble

On the similarity of goods, the starting point is the principle enunciated in CANON (Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc), paragraph 23:
“In assessing the similarity of the goods or services concerned .... all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary”.

Comparing the goods as cited above according to this test, the Hearing Officer found for identity or for similarity on all goods without exception, but that an average consumer would exercise a reasonable degree of care in purchasing the goods.

Regarding comparison of marks, guidance is given by the standard quartet of leading ECJ cases, namely Sabel v Puma, Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Canon, and Marca Mode v Adidas. Visually (which is how consumers select the goods in question), the Hearing Officer noted that consumers would not fail to notice the different endings of the words that are relatively short with three letters in common, even making allowance for the importance traditionally attached to the beginnings of words. On phonetic similarity, the degree of this would depend in part on how consumers would approach the applicant’s mark - whether or not with a stressed first syllable and long vowel (‘A’) sound (which would be closer phonetically to the opponent’s mark than with a stressed second syllable and short vowel sound). Conceptually, there was no significant difference between the two to be relevant in the assessment. For conceptual considerations to counteract visual and aural similarity, at least one of the marks must have a clear and specific meaning so that the public is capable of grasping it immediately (see Ruiz-Picasso and Others v OHIM, Case C-361/04P). Here the Hearing Officer was not convinced that consumers would immediately grasp any meanings at all such as to be relevant in this analysis (it had been suggested, for example, that ARION had a ‘scientific’ flavour because of the ‘ION’ element. ARIEL, on the other hand, meant ‘Lion of God’ in Hebrew; it could also be a character from The Tempest or the name of a type font). Taking all factors together, he found for a ‘moderate’, but not a large, degree of similarity.

The analysis of similarities and differences involved ‘some dissection of the marks’, but it was important ‘to bear in mind that the average consumer does not go through this process and it is the overall impression that must be borne in mind at the end of the day.’ Counsel for the opponent at the Appeal, who argued for a greater degree of similarity, contended that the Hearing Officer based his conclusions on the dissected marks rather than on overall impressions - a point roundly rejected by the Appointed Person in paragraph 11 of her judgment, pointing to the above preamble as an example that the legal principle was adhered to.

The Hearing officer had also rejected the opponent’s contention that ARION was likely to be viewed as a brand extension of ARIEL (FLASH and FAIRY were cited as examples of brand extension involving several different types of cleaning product). Indeed, this argument was counter-productive as the evidence showed that the trend in brand extension for household cleaning products was for the core brand to stay the same. ARIEL, for example, had remained unchanged since 1968.

The Hearing Officer’s conclusion was that, even taking into consideration the interdependency of the degree of similarity between the marks and the goods, the reputation of the earlier mark and the effect of imperfect recollection, there are insufficient similarities between the marks to lead to a likelihood of direct confusion. And even if ARION were to bring ARIEL to mind, the evidence pointed away from ARION being perceived as a variant form or brand extension of ARIEL. Hence there was also no likelihood of ‘indirect’ confusion through association.

The Appointed Person did not allow the appeal, no error having been found in the Hearing Officer’s approach. His determination was one that he was entitled to reach. Costs were awarded against the opponent.

Comment
During the course of this decision, mentioned in passing was the High Court case decided on 29 June 2007 by Lindsay J: esure Insurance Limited v Direct Line Insurance plc [2007] EWHC 1557 (Ch, paragraph 46), where the judge had stated that a ‘threshold’ - albeit a low one - has to be reached for there to be any form of ‘legal’ similarity between marks or goods. The point is made that similarity is an ‘autonomous concept of European law’ related to, but not invariably the same as, similarity in the simplest dictionary sense. Although this academic consideration does not make a difference to the outcome of the case under review, as ‘modest’ similarity was still found between the marks, this citation makes at least interesting reading on the concept of similarity. It also analyses the notions of ‘direct’ and ‘indirect’ confusion - also mentioned in the ARION case- that greatly clarifies what can be confusing concepts.

This article first appeared in the April 2008 issue of The ITMA review