Trade Marks: Nicoventures Holdings Ltd v The London Vape Company Ltd

Jane Lambert

Chancery Division  (Mr Justice Birss) Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch) (21 Dec 2017) 

On 26 Oct 2016, Nicoventures Holdings Limited applied to register the above trade mark for:

• electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes in class 34; and
• retail store services connected with the sale of e-cigarettes, electronic cigarettes, liquid solutions for use in electronic cigarettes, tobacco, smokers' articles, matches, personal vaporisers and electronic cigarettes and flavourings and solutions therefore in class 35.

The application was opposed by The London Vape Company Ltd. under s.5 (2) (b) of the Trade Marks Act 1994.  The earlier trade mark upon which the opponent relied was the following mark:

That mark was registered for electronic cigarettes; Liquid nicotine solutions for use in electronic cigarettes; electronic cigarettes in class 34.

The opposition came on before the hearing officer, Mr C Bowen (see Re Vape & Co. The London Vape Company Ltd. v Nicoventures Ltd. 13 July 2017 BL O/328/17).  He decided that there was a sufficient degree of similarity between the marks and goods to give rise to a likelihood of confusion.  He concluded at paragraph [43] that the opposition had succeeded and that the application for registration of the above mark should be refused 

The applicant appealed to the High Court on the ground that  Mr Bowen had erred in law by not taking into account the fact that the common elements of the two marks are elements with a very low degree of distinctiveness and that their differences were sufficient to preclude the likelihood of confusion.  The appeal came on before Mr Justice Birss in Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch) (21 Dec 2017).

The learned judge analysed Mr Bowen's decision and in particular paragraphs [41] and [42] in which he explained his reasoning:

“41. Notwithstanding the very low degree of distinctive character the opponent’s trade mark possesses, the fact remains that identical goods, and services which are similar to at least a low degree, are in play and the competing trade marks are visually and aurally similar to a high degree and conceptually similar to at least a high degree.
42. I have found that the average consumer will pay a relatively high degree of attention to the selection of the goods and at least a reasonable degree of attention to the selection of the services at issue. Although these levels of attention will make them less prone to the effects of imperfect recollection. I am, nonetheless, satisfied that the degree of similarity in the competing goods and services I have identified above combined with the similarity in the competing trade marks will lead to a likelihood of confusion. Given the high degree of aural similarity between the competing trade marks (which I have concluded is a not insignificant feature of the selection process), such confusion in those circumstances is likely to be direct i.e. one trade mark will be mistaken for the other. Although I accept that the competing trade marks are more different visually, direct confusion through imperfect recollection is still, in my view, a real likelihood. However, even if I am wrong in that regard, the overall similarity in the competing trade marks is, in my view, likely to lead the average consumer to assume that the applicant’s trade mark is, for example, a variant form or updated version of the opponent’s trade mark i.e. an economic connection will be assumed between the competing trade marks leading to indirect confusion.”

Having reviewed Mr Bowen's decision in detail, Mr Justice Birss stated at paragraph [29] he believed it contained an error of law.

In the judge's view, the error arose because the hearing officer had not taken into account the dicta of Mr Justice Arnold in Whyte and MacKay Ltd v Origin Wine UK Ltd and Another [2015] EWHC 1271 (Ch) (6 May 2015) that "if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion" (see paragraph [44] of his judgment).  Mr Justice Birss was, of course, careful to add at paragraph [27] of his judgment in Nicoventures Holdings that "[such] a situation does not preclude a finding of likelihood of confusion but it is a relevant factor and in an appropriate case it may be decisive." He said at paragraph [31]:

"The nature of the common elements needs to be considered and in a case like this, in which the common elements are elements which themselves are descriptive and non-distinctive (as the Hearing Officer found in paragraph 34), it is necessary somewhere to focus on the impact of this aspect on the likelihood of confusion. As has been said already it does not preclude a likelihood of confusion but it does weigh against it. There may still be a likelihood of confusion having regard to the distinctiveness and visual impact of the other components and the overall impression but the matter needs to be addressed."

As Mr Bowen had failed to address that point, the judge compared the marks and their respective goods and services de novo. He found that each mark included as important elements the words "VAPE" and "CO". Though the marks did have a high degree of visual, aural and conceptual similarity, those similarities arose from the common elements, namely the words "VAPE" and "CO" and the way they had been combined. The stylized aspects of each mark such as the scripts and colouring were unremarkable, but they were enough to distinguish the marks.  Accordingly, His Lordship concluded at paragraph [37] that there was no likelihood of confusion. He allowed the appeal and dismissed the opposition.

This may be a heretical view but it is my experience that errors of this kind arise from an over-concentration on the case law of the Court of Justice of the European Union and insufficient consideration to the language of s.5 (2) of the Trade Marks Act 1994 or art 5 (1) (b) of Directive (EU) 2015/2436.  An important element of both texts is the word "because".  It should not be enough to prove similarity of marks and goods in accordance with the Court's jurisprudence.  It should be because of those similarities that there is a risk of confusion including a likelihood of association with the earlier mark. There will always be circumstances where such similarities will not be causative of confusion and this is one of them.  A little bit of common sense and a little less book learning never goes amiss.

Should anyone want to challenge my assertion or discuss this case or trade mark law in general, he or she should call me on +44 (0)20 7404 5252 or send me a message through my contact form.