and NOW for something completely similar - by Sally Cooper

Time passes by – days and weeks and months and years come and go – and Trade Mark practitioners in the UK tussle with section 5(2)(b) Trade Marks Act 1994 where it says

“A trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public”. 

And where the first part of an earlier trade mark is (visually or aurally or conceptually) the same as the first part of the mark applied for, thoughts of the consumer and “imperfect recollection” come to mind and – particularly if goods are identical – there is concern the applicant will fail in its quest for registration.

So finding a case where an opponent succeeds on (visual and aural and conceptual) similarity, but fails on likelihood of confusion brings joy to the heart. The case in question is O-069-14 of 10th February 2014 being an Opposition by Now Wireless Ltd against a mark applied for by Nowcomm Limited.

This note is limited to matters set out at pages 20 / 21 (paragraphs 53 / 58) : in these two pages Mr Martin Boyle as Hearing Officer for the Registry sets out the two marks. He then expresses his considered views on similarity of marks which (in summary) are :

• “There is not more an average degree of visual similarity” and 
• “There is not more than a low degree of aural similarity” and 
• “There is a reasonable degree of overall conceptual similarity”. 

But joy comes with the findings that follow :

“I have found that none of the component parts of either mark are inherently distinctive, and that NOW is not markedly dominant in either case. I have found the earlier mark to be of low distinctiveness (though I bear in mind that weak distinctive character of an earlier mark does not preclude a likelihood of confusion) and even if I am wrong about that, the element NOW alone has not acquired a distinctive character as a result of the use of NOWWIRELESS. I have found an average degree of visual similarity, a low degree of aural similarity and a reasonable degree of conceptual similarity between the marks. I have found the goods and services of both specifications are largely aimed at professional business users. Even when bought by individuals they will be considered purchases. There will be a considerable bespoke element to many of the services and the requirement of technical suitability for intended use will mean they will be bought after technical discussions to ensure they are fit for purpose. In the light of this, even bearing in mind that I have found goods and services to be identical, I do not find that there is a likelihood of confusion (emphasis supplied)”.

The applicant applied to register its mark in July 2007 and opposition was filed in October 2008 : (to its credit) the UK Registry pressed on to its Decision notwithstanding that the earlier mark on which the opponent was able to rely was its CTM Application 4650156 filed in 2005 and which is the subject of two (suspended) oppositions. Time passes by – and we wait to see whether the opponent will appeal !

The Duck points out that its not possible to declare an earlier mark invalid in opposition proceedings but it does seem that the applicant drew attention to Arnold J's decision of NOW invalidity in the fight between EMI and Starbucks. Since that decision was upheld by the Court of Appeal the remaining distinctive character in both these marks is their choice of a companion term and since those are different the opposition was rightly doomed. Now can we move on to wonder if Now is the 73rd most common word in the English language to wonder where com comes.