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certain environment, or in a specific
price range, or that the mark will only
appear in a certain way in connection
with the goods/services. Trade mark
proprietors are free to change the
way they market goods/services and
they can assign marks which may
then be used however the new
proprietor sees fit.
49.10 Disclaimers
Where the only component of the
earlier trade mark which could be
regarded as creating a similarity with
a later trade mark is the subject of a
disclaimer to any exclusive right, the
examiner will not consider the marks
to be similar enough to create a
likelihood of confusion.
The Registrar will treat a disclaimer
as an admission that the disclaimed
component of the earlier mark is not,
by itself, distinctive of the proprietor’s
goods and/or services. In that case,
its presence in another party’s trade
mark cannot give rise to a likelihood
of confusion. The disclaimed
component(s) of the earlier trade
mark may still contribute towards
confusion between the marks and
therefore a requirement for the
Registrar to notify the owners of the
earlier mark where there are other
similarities between the respective
trade marks.
An applicant’s offer to disclaim
exclusive rights to a component of
his (later) trade mark will not assist in
overcoming a requirement to notify
because an admission made by the
applicant cannot, of itself, be deemed
to affect the scope of protection of
the earlier trade mark. Of course, if
the applicant can show that the
feature shared by the marks is in fact
non-distinctive, the notification
requirement will be reviewed.
49.11 Section 5(3)
This may prevent registration of a
mark which is identical with or similar
to an earlier mark which has a
reputation. This will not be dealt with
at the examination stage. It will be up
to the proprietor of the earlier mark
to prove reputation in opposition
proceedings.
49.12 Section 5(4)
This prevents registration of a mark
the use of which at the date of
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application [or priority] would have
been prevented by any rule of law, eg
passing off, and also because of any
other earlier right, such as copyright,
design right or registered design.
Section 5(4) can only be determined on
the basis of evidence filed in opposition
or invalidation proceedings.
49.13 Families of Marks
Simon Thorley QC, acting as
the Appointed Person, gave
consideration to this point in the
Ener-Cap appeal, 1999 RPC 362,
believing the question of “families
of marks” to be irrelevant to Section
5(2)(b) but that it could be relevant to
an argument under 5(4) of the Act.
If a search reveals a number of marks
in the same ownership with common
identical elements, they should not
be regarded as confusingly similar
to the mark being examined on this
count alone; to do so would be to
assume a degree of reputation in the
common feature of the earlier marks.
Reputation cannot be considered at
the ex parte stage because this is
only appropriate as a matter for
consideration under opposition. It
cannot be assumed in the prima facie
that any or all of the marks are even
in use at the date of application.
Consequently, where similar marks
in the name of the same party are
identified in a search, they should
be compared with the later mark
sequentially, not collectively.
Of course, there may be a case for the
Registrar notifying the owners of all
or some of the earlier marks on other
grounds. For example, company A
has registered marks including
“Portakabin”, “Portaloo”, “Portahouse”,
“Portatank” and “Portasafe”, and
company B has applied for
“Portahome”. The Registrar would not
notify the owners of all the registered
marks but only those, if any, that are
individually confusing, ie Portahouse,
on the grounds of visual and
conceptual similarity.
There may also be cases where the
common feature of the earlier marks
is so inherently distinctive that its
inclusion in the later mark is sufficient
to give rise to a likelihood of
confusion, notwithstanding the
differences in the marks. For example,
ZIGGOOSUR v ZIGGOOTAN; in this
case the existence of other similar
earlier marks in the name of the same
party, eg ZIGGOONOR, will not add to
the case for notifying the owners of
ZIGGOOSUR.
49.14 Retail Services: search of the
Register
In case C-418/02, Advocate General
Phillipe Leger opined [agreeing with
communication No 3/01 from the
President of OHIM] that “the risk of
confusion between [retail] services
and the products, if it cannot be
excluded, is nevertheless improbable
except in particular circumstances, for
example when the respective marks
are identical or almost identical and
well established on the market.”
The ECJ did not feel the need to
answer the referring court’s question
about the scope of protection of
retailers’ marks and so there is
no definitive statement of law.
Nevertheless, the Advocate General’s
Opinion is of persuasive value. In the
light of it we will consider notifying
the earlier right holders in the course
of official examination where:
a mark is registered (or proposed to
be registered) for retail services (or
similar descriptions of this service)
connected with the sale of specific
goods or types of goods;
another mark is registered (or
proposed to be registered) by a
different undertaking for goods of
the type expressly mentioned in the
specification of the retail services
trade mark;
the earlier trade mark has at
least a normal degree of distinctive
character, ie marks with low
distinctive character, such as, for
example, common surnames,
need not be cited;
the later trade mark is not just similar
to the earlier mark but is identical or
virtually identical to it, or contains a
dominant and/or independently
distinctive feature of it.
The reputation of the earlier trade
mark and (unless it is obvious) the
practices of the trade will only be
taken into account on the basis
of evidence in opposition or
invalidation proceedings.
In view of these factors, we will
conduct a search for earlier trade
marks as detailed in the guide to
cross searching (see www.ipo.gov.uk).
14 ITMA Review November 2007