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.

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