Facts

Tik Tok International Ltd, an IT consultancy business (the Appellant), appealed against the IPO Hearing Officer’s decision that its UK registration for TIK TOK in class 42 for “compilation of information relating to information technology”, registered in 2018 (the Mark), should be declared invalid under s 5(2)(a) of the Trade Marks Act 1994, in the light of the earlier registration for TIK TOK owned by TikTok Information Technologies UK Ltd (the Respondent), which runs the well-known social media platform on which users can post short videos, including, but not limited to, music videos.

The Respondent’s mark was registered on 23 April 2018 but claimed a priority date of 23 October 2017 from an Indian mark (the Earlier Mark). It is registered in Class 9 for “… application software for smart phone …”, Class 38 for “providing access to search services of smart phone applications …”, and Class 41 for “electronic publication of information on a wide range of topics”.

At first instance, the Appellant acknowledged that the Earlier Mark and the Mark were identical but denied that its services were similar to the goods or services for which the Earlier Mark was registered. The Hearing Officer found that:

1. the Earlier Mark was inherently distinctive to a high degree;
2. the goods and services were similar to at least a low degree;
3. the average consumer would pay at least a medium degree of attention during the purchasing act; and
4. there was a likelihood of direct confusion.

On appeal, the Appellant said that the Hearing Officer was wrong to find that the Earlier Mark was distinctive to a high degree, that there was similarity between any of the relevant goods and services, or that there was a likelihood of confusion.

Decision

On the issue of distinctiveness, the Appellant argued that the Earlier Mark represented a widely used onomatopoeic term, referring to the operation of a metronome or clock. It said that the Earlier Mark was descriptive of the Respondent’s service of providing a platform for posting short videos of musical and/or dance performances, and that the services or goods were encompassed in the goods and services for which the Earlier Mark was registered.

Mrs Justice Falk disagreed, finding that the question of distinctiveness was not determined by a broad inquiry about the nature of the business of the party in question.

Further, to the extent that the Respondent’s Earlier Mark was evocative of the sound of a metronome or clock, the clearly deliberate misspelling was an element of distinctiveness. The misspelling rendered the phrase “invented”, as the Hearing Officer had found.

Moreover, whilst the Earlier Mark was regarded as descriptive of time and sounded like “tick tock” spelt in the conventional way, it was not descriptive of music or music videos. At most it was descriptive of pulse, rather than rhythm, music or videos, and certainly not of the goods and services considered by the Hearing Officer. In Falk’s view: “Common sense tells you that the Earlier Mark is inherently distinctive, and highly so”.

As for similarity, in relation to the software products referred to in Class 9, the Hearing Officer had agreed with the Respondent that they referred to IT products that could be used for any purpose as their specification was unrestricted. Therefore, they could have the functionality of gathering and compiling information, such that there was some overlap in nature, purpose and users to cause at least a low level of similarity to exist.

The Hearing Officer was simply saying that software can clearly be used to do the job of “compilation” and she was entitled so to find.

As for Class 38, Falk J said that the Hearing Officer’s conclusion was “more difficult”, but she was not sufficiently persuaded that it was wrong.

As for Class 41, the Hearing Officer had considered that the Earlier Mark’s specification was not quite on all fours with the Appellant’s “compilation” services, “publication” being about the presentation of information and a “step away” from “compilation”, such that the nature or purpose of the services was not the same. However, she had considered that there may be some overlap of users, and overall a low degree of complementarity, on the basis that consumers might think that the same undertaking would be responsible for both gathering and publishing information on a particular topic.

Falk J found that the Hearing Officer had correctly set out the complementarity principle (established by Case T-325/06 Boston Scientific Ltd v OHIM), and she could not conclude that the Hearing Officer’s conclusions were wrong. Falk J said that publishing information would usually require, as a first step, gathering that information. Similarly, information is generally gathered for the purpose of disseminating it in some form, in which case, the Hearing Officer’s decision as to complementarity was one that she was entitled to reach.

Finally, on likelihood of confusion, the Appellant asserted that the Hearing Officer’s conclusion relied on the erroneous view that the Earlier Mark was inherently distinctive. In Falk J’s view, the Hearing Officer had not misdirected herself, and she had been entitled to reach the decision she had. The Earlier Mark was clearly highly distinctive and the identity between the Earlier Mark and the Mark was very significant in offsetting any low degree of similarity.

The appeal was dismissed. (Tik Tok International Ltd v TikTok Information Technologies Ltd [2022] EWHC 1220 (Ch) (18 May 2022) — to read the judgment in full, click here).