UK: Yell Silenced On Appeal

Last Updated: 24 July 2013
Article by Rosalyn Newsome

Rosalyn Newsome sets out why ıı grounds weren't sufficient for success

Yelp! Inc ("the Applicant") applied on ı7 December 2008 to register a UK Trade Mark 2505006 YELP & Device (series of four, "the Mark"). The Application was for a wide range of services in classes 35, 38, 4ı, 42 and 45.

The Mark was opposed by Yell Limited on the basis of Section 5(2)(b) under Opposition 99222. Seventeen earlier Trade Marks were relied upon, with the strongest rights held to be Community Trade Mark Application 2ı72682 YELL & Device and UK Registration 245ı074 YELL.COM. The Hearing Officer, Oliver Morris, in his decision of ı6 June 20ıı, determined that he would consider the merits of the Opposition for those two earlier Marks, because if the Opponent were unsuccessful for these Marks the Opposition would fail for the remaining Marks. Similarly, he restricted his examination to certain services in class 35, which were deemed identical.

Proof of use was not required for either of the earlier Marks, but lengthy evidence, as well as written submissions, were filed by the Opponent. Nonetheless, the Hearing Officer did not find the Marks sufficiently similar for a likelihood of confusion and the Opposition was unsuccessful. Yell Limited filed an appeal against the decision relating to this assessment and also sought permission to adduce new evidence. It is worth listing the numerous grounds for the appeal (all of which failed):

1) The Hearing Officer over-analysed the Marks.

2) & 3) He did not find enough degree of conceptual similarity.

4) He misapplied the law concerning distinctive/dominant components when considering visual similarity.

5) This affected the decision on aural similarity.

6) Too high a level of attention was allocated to the appropriate consumer.

7) The above points vindicated the assessment of a likelihood of confusion.

8) The Hearing Officer failed to consider how confusion might have arisen.

9) The Opponent sought to adduce fresh evidence.

10) The Hearing Officer gave insufficient weight to the reputation of the earlier Marks.

11) The Hearing Officer wrongly took comfort in the lack of evidence of actual confusion.

An Appeal is not a re-hearing of the facts, but should question a decision based on an error in the application of the law or a clear material error.

On the first ground of appeal – that the Hearing Officer had over analysed the Marks following the classic analysis on a visual, phonetic and conceptual Case in point: O/021/13, Yelp! Inc v Yell Limited, Appeal to the Appointed Person, UKIPO, Amanda Michaels, 11 January 2013 basis – in particular, objection was raised regarding the Hearing Officer's reference to the General Court's comments in Inter Ikea Systems BV v OHIM. In that case, it was stated: "As regards the visual comparison between the verbal element of the contested Mark and the earlier word Mark, the Applicant claims that the only difference between them is the presence of the letter "d" in the contested Mark and the letter "k" in the earlier word Mark. However, the Court has already held in case T-ı85/02 Ruiz-Picasso and others v OHIM that, in the case of word Marks that are relatively short, even if two Marks differ by no more than a single consonant, it cannot be found that there is a high degree of visual similarity between them. Accordingly, the degree of visual similarity of the earlier word Marks and the verbal element of the contested Mark must be described as 'low'."

The Opponent submitted that the conclusion of the Court in Ruiz-Picasso was wrong. The Appointed Person agreed and had previously commented so in her Decision BLO/387/ıı Boo Boo Trade Mark. Therefore, while the Appointed Person had some sympathy with the Opponent, in her view, it was clear from reading the Hearing Officer's Decision that he only took guidance from the General Court and in his own terms concluded that: "In short words, differences in the letters, even if at the end of short words, are likely to stand out more. The difference is less likely to be overlooked." The Appointed Person agreed that this was a reasonable conclusion based on the Marks in question and it did not reflect the earlier mistake of the General Court. Therefore, the citation of an earlier authority that is deemed questionable does not automatically result in an error of principle. It depends on the application of the prior decision in the current decision. Similarly, no error of principle was found in connection with the assessment of aural or conceptual similarity.

Evidence request

The other interesting aspect of this case was the Opponent's request to adduce fresh evidence at appeal. The original hearing took place on ı8 March 20ıı and the Opponent sought to submit an article from the Independent newspaper dated 2ı April 20ıı. The decision was not issued until ı6 June 20ıı. The Opponent argued that a journalist had become confused into thinking that the Yelp website was in some way connected with Yellow Pages. The request was refused outright, because it became clear that the article was flagged to the Opponent soon after the initial Hearing.

While it is possible to seek permission to adduce new evidence on appeal (the foundations of which are well established in the Du Pont Trade Mark [2004] FSR ı5), the Opponent did not follow the correct procedural steps. The Appointed Person was critical in the delay of this additional evidence being presented, given that it became available shortly after the hearing and well before he had handed down his decision. The Appointed Person questioned why the Opponent did not request that the Hearing Officer consider the evidence if it deemed it so helpful to its case. She continued that the Opponent should have invited the Hearing Officer to take the evidence into account, if necessary giving the Applicant an opportunity to comment upon it. The fact that the request to submit the evidence was made in a written submission, rather than via a fresh witness statement that should explain why the evidence had only 'The fact that the request to submit the evidence was made in a written submission, rather than via a fresh witness statement that should explain why the evidence had only just come to light and the significance of the evidence, was also criticised' just come to light and the significance of the evidence, was also criticised. This is in accordance with the principles set out in Ladd v Marshall [ı954] ı WLR ı498. The second instance in which new evidence is admissible on appeal is when it is deemed to have an important influence on the result of the case, and again it was felt that this requirement was not met.

All of the remaining grounds of the appeal were also duly dismissed. More than anything else, this decision provides useful guidance on the acceptable levels of analysis of short marks and confirms the correct procedure for the late submission of evidence on appeal.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.