Revive a Phone Ltd appealed against a decision of the IPO Hearing Officer, Rosie Le Breton, invalidating UK registered trade marks for the word mark WEFIX, registered on 26 January 2018 in class 37 for repair and maintenance of computers, telecommunications hardware and smartphones and repair of various devices and equipment (the Word Mark), and the following logo mark, registered on 14 December 2018 in class 36 for insurance and financial and monetary affairs and in class 37 for a range of repair services for telephones, tablets, communications systems and computers (the Logo Mark):

Both marks were revoked under s 5(2)(b) of the Trade Marks Act 1994 based on the following earlier EU registered trade mark owned by WeFix, registered on 15 July 2017, claiming the colours orange, black and white, in classes 9 (including cell phones, smartphones, tablet computers), 35 (including retailing both online and in shops of electronic and telecommunications apparatus, telephones and smartphones) and 36 (including repair of telephones, smartphones and tablets):

Revive a Phone’s appeal concerned the treatment of descriptive words under s 5(2)(b). It said that the Hearing Officer had failed: (i) 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 question, which should have influenced her analysis of the level of visual, aural and conceptual similarity between the marks; and (ii) to properly apply the principle that where the only similarity between the marks consists of a common element with low distinctiveness, that will not normally give rise to a likelihood of confusion, which would have led to a finding of no likelihood of confusion and would not have invalidated Revive a Phone’s marks.

Decision

Distinctiveness

Revive a Phone said that the Hearing Officer had erred by dealing with the question of distinctive character after carrying out the comparison of the marks; she should have considered the distinctive character of both marks when undertaking the comparison. Further, she had only assessed the distinctive character of the earlier mark.

Ian Karet (sitting as a Deputy High Court Judge) said that while it was true that Ms Le Breton had made an initial comparison of the marks and then dealt with the distinctive character of the earlier mark, she had then brought everything together under the heading “Global Assessment”. By then, she had 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 result of her earlier findings.

In Mr Karet’s view, Ms Le Breton had first made a comparison between the marks and then applied, to that, her finding that the earlier mark had only a low level of distinctiveness in order to anchor her analysis. Her finding that the earlier mark was distinctive to a low degree had underpinned her conclusions on the similarity between the marks. Accordingly, there was no error of principle.

Likelihood of confusion

Mr Karet said that the Hearing Officer had conducted the global assessment correctly. In respect of the Word Mark, she had noted that the earlier mark was inherently distinctive to a low degree and that the distinctiveness of the common element WEFIX was low. She had therefore made the comparison required by Nicoventures Holding Limited v The London Vape Company Ltd [2017] EWHC 3393 (Ch) (on which Revive a Phone relied), which said that “it is only the distinctiveness of the shared components which matter”. In Ms Le Breton’s view, there was “very little for the consumer to grasp onto to differentiate between the marks”.

Mr Karet noted that Nicoventures also followed the principle from Whyte and Mackay v Origin [2015] EWHC 1271 (Ch) that if the only similarity between the marks is a common element with low distinctiveness, that points against there being a likelihood of confusion. However, in Nicoventures the judge had also said that a finding that the marks have a common element with low distinctiveness “does not preclude a finding of likelihood of confusion”.

Mr Karet said that in considering the Logo Mark, the Hearing Officer had found that the earlier mark had a low degree of distinctiveness as a whole and that the distinctiveness of the common element was also undoubtedly low. She had concluded that there would be no direct confusion as the consumer would notice and recall the differences between the marks. However, despite the low distinctiveness, she had found that there would be indirect confusion in this instance because consumers would think that Revive A Phone’s marks were an updated version or variant of WeFix’s earlier logo, or vice versa.

Accordingly, in Mr Karet’s view, the Hearing Officer did not make an error of principle in reaching her conclusion. She had the relevant issues in mind, albeit without the parties having cited Nicoventures or Whyte and Mackay.

Mr Karet concluded that the Hearing Officer’s decision was carefully reasoned and her conclusions did not warrant interference. The appeal was dismissed. (Revive a Phone Ltd v WeFix [2022] EWHC 2195 (Ch) (19 August 2022) — to read the judgment in full, click here).