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But Charlotte Wilding believes an opportunity may have been wasted ‘SOHO SOCIETY’ – O/592/19 In the matter of Application No. UK00003302733 by the Soho Society… Read more

But Charlotte Wilding believes an opportunity may have been wasted

‘SOHO SOCIETY’ – O/592/19

In the matter of Application No. UK00003302733 by the Soho Society to register the trade mark SOHO SOCIETY logo in Class 32 and in the matter of opposition thereto under No. 413866 by Soho Brewing Ltd

Background

The Soho Society (“TSS”) applied for a UK TM application in Class 32 on 29 June 2018 for the logo (“the opposed mark”):

This was opposed by Soho Brewing Ltd (“SBL”) on the basis of a likelihood of confusion with its earlier UK and EUTM registrations for the below marks in Class 32:

– UK Reg. No. 3138488

– UK Reg. No. 3025125 and EUTM Reg. No. 13869896

TSS denied the claim of likelihood of confusion and filed evidence in the form of a witness statement, which focussed on TSS’s prior use of the opposed mark and the fact that “Soho” is the name of an area in London.

Prior Use by TSS

The fact that TSS claims to have prior use of the opposed mark is not a defence to the opposition. TSS should have sought to invalidate SBL’s earlier registrations and suspend the opposition pending the invalidation actions. However, TSS did not seek to invalidate SBL’s earlier registrations.

Comparison of goods

As “beer” appears in the specifications of both TSS and SBL, the goods are identical

Average consumer

The average consumer is a member of the general public over 18 years, with a medium degree of attention when purchasing the goods. The goods are likely to be primarily purchased due to visual elements, with some aural component also.

Comparison of marks

The only overlapping element of the marks is SOHO.

As the additional wording, devices, colours and background elements all differ, there is a low degree of visual and conceptual similarity.

The aural similarity is considered to be low to medium as, although LAGER, PILSNER, PALE ALE and PORTER may not be pronounced due to being descriptive, likewise OUR NEIGHBOURHOOD IS YOUR BUSINESS may not be pronounced due to being smaller in the logo, the words THE and SOCIETY and BREWERY LTD are distinguishable.

Distinctive character

SBL did not claim enhanced distinctive character and therefore the inherent distinctive character is no more than low to medium.

Likelihood of Confusion

Although the goods were identical, given the low visual and conceptual similarities and the low to medium degree of aural similarity and distinctive character, there is no likelihood of direct or indirect confusion.

It was held that the marks were unlikely to be mistakenly recalled or misremembered as each other. Further, the SOHO element was more likely to be seen by consumers as a link to Soho in London and not indicating linked businesses.

Decision

The opposition failed and SBL was granted a contribution to its costs.

Comments

This case is a good reminder that whilst a dominate element of one mark may be identical to the dominant element of another mark, even with identical goods or services, that does not automatically result in a finding of confusion. Further, it is not possible to rely on earlier use as a defence to an opposition, instead you must bring a separate invalidation action to have the marks removed from the Register.

Key Points

• identical dominant elements between marks may not be enough to find similarity
• you cannot claim earlier use of a mark as a defence in a trade mark opposition

This article was first published in the February 2020 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk

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