E-cigarette company’s appeal bid: Up in smoke
CCHG Limited t/a Vaporized v Vapouriz Limited is an appeal of a decision by a hearing officer (the HO) at the UK Intellectual Property Office. This decision marks the first appeal made to the Court of Session, indeed to any Scottish court, of an HO’s decision under the Trade Mark Act 1994 (the TMA 1994). This is quite different to the position in England where a number of such appeals have been brought before the English courts. Ultimately, Lady Wolffe upheld the HO’s decision in full.
In November 2016, the HO from the UK Intellectual Property Office refused CCHG’s application for registration on the basis that the trade mark was ‘confusingly similar to the respondent’s trademark which had been registered earlier’. CCHG appealed this decision to the Scottish Court of Session on the basis that the HO had (i) failed to properly compare the two marks; (ii) had not properly looked at the marks through the objective eyes of the ‘average consumer’ and (iii) should not have found that there was a likelihood of confusion between the two marks.
The Court of Session judge, Lady Wolffe ultimately refused the appeal and considered that the HO had not erred in his characterisation of the average consumer or in law when comparing the marks in issue, nor had he erred in his assessment of the likelihood of confusion between the two trademarks.
|Appellant’s Trademark||Respondent’s trademark|
Level of review into a decision by the HO
Lady Wolffe considered that the HO’s original decision making process involved a ‘nuanced and evaluative assessment by persons exercising a specialised jurisdiction after weighing up certain factors’. As a result she proposed to approach the review of such decisions ‘with an appropriate degree of circumspection’. In doing so she explained that the TMA 1994 has UK-wide application and that it is therefore ‘desirable that the appellate function of [the Court of Session] […] accords with that in England’. The appellant invited the court to accept new assertions which contradicted the HO’s findings however Lady Wolffe held that these were not permissible grounds of challenge. The court decided that the decision at first instance could only be interfered with where there has been ‘a distinct error of principle’ or if the decision was ‘plainly wrong’ which ‘no reasonable judge could have reached’. This illustrates how the court treats such cases in a way similar to judicial reviews of decisions by public bodies.
Characteristics of the average consumer and the purchasing process
Counsel for CCHG submitted that the ‘HO had erred in attributing too much weight to aural similarities’ and by ‘not expressly attributing to the average consumer a knowledge of the use of vape and cognate words in the context of e-cigarettes’. Lady Wolffe observed that the HO had used his own personal knowledge of the subject matter but had made no error in doing so. The court decided that ‘a hearing officer does not require to be exhaustive in setting out the factors as the basis for his or her decision or for every stage in the decision making process’. Lady Wolffe decided that the HO did not err in principle by attributing certain weighting to different factors and that the decision was not wrong, ‘much less ‘plainly wrong’’ and concluded the HO had appropriately considered the average consumer’s knowledge of how the word ‘vape’ and other such descriptive words are used in the context of the trademark.
Comparison of the trademarks
CCHG argued that the HO had artificially dissected the marks when comparing them. Lady Wolffe rejected this argument. She observed that an analysis on a dissected basis alone would be an error of law but in this case a global assessment was also carried out. As a result the HO’s assessment was considered as being ‘unimpeachable’. Lady Wolffe could not identify ‘any error as to [the HO’s] approach’ which would ‘justify any interference’ with his decision.
Likelihood of confusion
Lastly, Counsel for the appellant submitted that the HO had erred when assessing the likelihood of confusion by failing to assess the marks as a whole and by giving undue weight to aural similarity to the detriment of what were said to be visual similarities. The appellant’s counsel further submitted that the ‘visual element’ of a trademark should be ‘paramount’.
Lady Wolffe was not convinced by this proposition. She agreed that the conclusions the HO came to were based on ‘assessments within the province of a hearing officer’ and that ‘simple disagreement [with them] does not constitute a recognised ground of challenge’. Lady Wolffe confirmed that she could not find any ‘error in principle’ on the part of the HO in assessing the likelihood of confusion or that the HO was ‘plainly wrong’. As a result the HO’s original decision was upheld.
What do we take from the decision?
The appellant brought a number of grounds of challenge in this case which were ultimately dismissed by the court. These grounds criticised the way in which the HO made his decision. However, Lady Wolffe could not uphold these criticisms and concluded that the HO had not erred in any capacity. This case illustrates that the court will not step in merely where a party considers the ‘wrong’ decision was made - the decision must be ‘plainly wrong’ and one which ‘no reasonable judge could have reached’. It is clear from this decision that, similarly to the English courts, the Scottish courts will be very reluctant to interfere with decisions of hearing officers in trademark infringement cases.