Case No: CH/2011/0397 and CH/2011/0450
Neutral Citation Number: [2011] EWHC 3558 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
ON APPEAL FROM THE TRADE MARK REGISTRY
IN THE MATTER OF THE TRADE MARKS ACT 1994
AND IN THE MATTER OF THE UK TRADE MARK No 2491161 FUNKY SHAPER

The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL

Thursday, 1 December 2011

BEFORE:
HIS HONOUR JUDGE BIRSS QC
(Sitting as a Judge of the High Court)
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B E T W E E N:

THE WELLA CORPORATION
Applicant/Claimant
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ALBERTO‑CULVER COMPANY
Respondent/Defendant

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Digital Transcript of Wordwave International, a Merrill Communications Company
101 Finsbury Pavement London EC2A 1ER 
Tel No: 020 7422 6131  Fax No: 020 7422 6134
Web: www.merrillcorp.com/mls       Email: mlstape@merrillcorp.com 
 (Official Shorthand Writers to the Court) 
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MS D MCFARLAND (instructed by D Young & Co LLP) appeared on behalf of the Claimant
MS A EDWARDS‑STUART (instructed by Baker & KcKenzie LLP) appeared on behalf of the Defendant
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Judgment
HIS HONOUR JUDGE BIRSS:  
1.	This is an appeal from a decision of Mr David Landau, sitting in UKIPO for the Registrar of Trade Marks.  It is decision O-229-11, dated 30 June 2011.  The decision deals with the registered trade mark number 2491161 in the name of Alberto‑Culver Corporation.  The mark is for the words, “FUNKY SHAPER”, in class 3.  The specification of goods is: 
hair care products; hair care preparations.  

2.	The mark was applied for on 26 June 2008 and the registration process was completed on 6 November 2009.  On 24 November 2009, the Wella Corporation applied under section 47(2)(a) of the Trade Marks Act 1994 for the mark to be declared invalid.  Wella relied on section 5(2)(b) and section 5(3) of the Act.  On this appeal the issue relates to section 5(2)(b).  That section provides as follows:  

“(2) A trade mark shall not be registered if because‑ 

(b) 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 of the part of the public, which includes the likelihood association with the earlier trade mark.” 

3.	Wella’s case was based on an earlier Community Trade Mark of theirs.  It is number 55608 for the word “SHAPER”, in class 3.  That mark had been applied for on 1 April 1996 and registered in 1998.  The specification of goods is: 
non‑medicated hair care preparations; namely, hairspray. 

4.	Mr Landau rejected Wella’s application and dismissed the case under section 5(2)(b).  Wella appealed and the matter comes before me.  On this appeal, Ms Denise McFarland appears for Wella, instructed by D Young & Co, and Miss Anna Edwards‑Stuart appears for Alberto, instructed by Baker & McKenzie.

5.	It is common ground that this appeal is conducted as a review of the decision at first instance, see Reef [2003] RPC 5.  

6.	Mr Landau’s decision reviews the evidence before him from paragraphs 7 to paragraph 28 of the decision.  At paragraph 29 he notes that Miss Edwards‑Stuart accepted before him that Wella had established genuine use of its trade mark on goods for which it was registered in the five years prior to Wella’s application before him.  

7.	He dismissed the application under section 5(3) and nothing turns on that.  He then turned to section 5(2).  He addressed the average consumer in paragraph 32 of his judgment and no criticism is made or arises from that.  At paragraph 33 he noted Ms Edwards-Stuart’s acceptance that the goods in question were identical.  He compared the marks of “FUNKY SHAPER” and “SHAPER” in paragraphs 34 to 37 of his decision and concluded:  

“The presence of the word SHAPER in the trade mark of Alberto leads inevitably to a good degree of visual, phonetic and conceptual similarity.”  

No criticism of that finding is made by the appellant nor I should say by the respondent.  

8.	Mr Landau then expressed his conclusions from paragraph 38 onwards.  In paragraph 38 he dealt with the question of an absence of actual confusion and concluded that the absence of evidence of confusion in the market place was without pertinence.  Nothing turns on that finding.  It is not being criticised by either party.  

9.	Paragraphs 39 and 40 are the keys to the decision.  They provide: 

39) In L’Oréal SA v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case C-235/05 P the CJEU stated: 

‘43 It must therefore be held that the applicant had misconstrued the concepts which govern the determination of whether a likelihood of confusion between two marks exists, by failing to distinguish between the notion of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a complex mark possesses, which is concerned with its ability to dominate the overall impression created by the mark.

45 The applicant’s approach would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance.  The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question.  If that were case, it would be possible to register a complex mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that complex mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations and not that that difference denoted goods from different traders.’

However, balanced against this, is the nature of a likelihood of confusion.

40) There is a presumption of validity in relation to the earlier trade mark.  The evidence demonstrates that Wella’s trade mark, at the date of application for registration of Alberto’s trade mark and at the date of the application for invalidation, was directly descriptive of the goods.  At the date of application for registration of Alberto’s trade mark, Wella’s trade mark lacked all distinctive character and the evidence of use does not establish that it had gained any distinctive character from use.  The evidence leads to the conclusion that the average consumer will see the trade mark as being used to describe a particular type of product, a shaping product, emanating from Sebastian.  A presumption of validity does not lead to a presumption of confusion because of similarity.  A case under section 5(1) of the Act is based purely on fact: are the trade marks and goods identical?  The fundamental premise of likelihood of confusion, section 5(2) of the Act, is that the average consumer of the goods concerned will believe that the parties are the same or economically linked as per the judgement of the CJEU in Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc Case C-39/97: 

‘30.  The answer to be given to the second part of the question must therefore be that there may be a likelihood of confusion within the meaning of Article 4(1)(b) of the Directive even where the public perception is that the goods or services have different places of production.  By contrast, there can be no such likelihood where it does not appear that the public could believe that the goods or services come from the same undertaking or, as the case may be, from economically-linked undertakings.’

The respective goods are identical.  The respective trade marks have clear visual, aural and conceptual similarities.  However, neither trade mark at the date of application for registration will be seen by the average consumer as indicating origin; consequently, the average consumer will not believe that the respective goods come from the same undertaking or economically linked undertakings.  Consequently, there is not a likelihood of confusion and the grounds of invalidation under section 5(2)(b) of the Act are dismissed.” 

[Mr Landau’s emphasis]

10.	So in essence, Mr Landau decided the case in this way.  He held that “SHAPER” lacked all distinctive character.  He held that “FUNKY” was laudatory and descriptive.  Since neither mark would be regarded as indicating origin, the consumer would not regard goods using the two marks as coming from the same undertakings and thus there was no likelihood of confusion.  

11.	Ms McFarland, for the appellants, puts her case on appeal in three elements.  First, she submits that the conclusion that “SHAPER” lacked all distinctive character is a finding that her client’s mark is invalid.  That, it is submitted, was not open to Mr Landau as a matter of law.  

12.	Ms McFarland accepts on appeal that if the hearing officer had decided that the level of distinctiveness was low or very low, that would have been a difficult matter for the appellant to appeal since evidence was before him on which a tribunal, properly directed, could reach such conclusion.  I should say that Wella would not accept that that conclusion was correct in any event but that is another matter.  On appeal, from the evidence that was before the hearing officer, Ms McFarland accepts it would be difficult to appeal such a decision.  

13.	However, it is submitted, to go further and on to a finding of no distinctiveness at all is a decision that the trade mark is invalid and that is not acceptable.  Ms McFarland points out that registered trademarks are presumed to be valid.  The decision has the effect of rendering the earlier mark of no value.  

14.	The second point taken on appeal is that the decision is wrong in that if the word “FUNKY” does not add anything to the word “SHAPER”, “FUNKY SHAPER” cannot be valid over “SHAPER”.  Adding something entirely descriptive or laudatory onto the mark “SHAPER” should not give rise to a valid trademark.  

15.	Finally, the third point, is to submit that although Mr Landau stated the law correctly, he misapplied it in such a way that no reasonable tribunal could come to the decision on which he came on the evidence before him.  

16.	Ms Edwards‑Stuart, for Alberto, responds as follows.  On the first point, she submits that a finding that “SHAPER” lacked all distinctive character is not excluded as a matter of law.  She submits it was open to Mr Landau on the evidence and he was entitled to make that finding.  As regards “FUNKY”, by way of a respondent’s notice, Ms Edwards‑Stuart takes the point that “FUNKY” is not in fact purely laudatory or descriptive.  It had, according to the respondent’s notice, some distinctive character which could add to the word “SHAPER”.  As regards the appellant’s third point, Ms Edwards‑Stuart submits, in my judgment rightly, that it is a high hurdle for an appellant on appeal to overcome.  

17.	Having heard the appellant open the appeal and the respondent reply on the appeal, I decided that I would consider the appeal first and then inform the parties whether I wished to hear the respondent’s notice.  In the event I decided that I did not need to hear the respondent’s notice.  

18.	It seems to me that the appeal turns on paragraph 40 of the decision.  In paragraph 40, the hearing officer held that at the date of the application for registration of Alberto’s trade mark, Wella’s trade mark lacked all distinctive character and the evidence produced had not established that it had gained any distinctive character from use.  

19.	Ms McFarland submits that is a finding that her client’s trade mark is invalid and as such was not open to the hearing officer.  Ms Edwards‑Stuart submitted it is not a finding that the mark is invalid because it is specific about the dates.  If a mark was not distinctive when it was applied for, it can acquire distinctiveness through use, so it can be said that we do not know, and Mr Landau had not decided, what the position in relation to the “SHAPER” mark is today.  

20.	If a party wanted to attack the “SHAPER” mark, it could apply and contend it was not distinctive when it was applied for.  However Wella could reply that by the time of the application (in this example today in 2011) it had acquired distinctiveness through use.  Ms Edwards Stuart pointed out that what Mr Landau decided was that, at the date of the application of Alberto’s trade mark (which was in 2009) “SHAPER” lacked all distinctive character.  

21.	In my judgment, Ms Edwards‑Stuart is correct.  Mr Landau’s decision was correctly focused on a particular point in time.  The relevant time is the time when Alberto’s trade marks were applied for.  He decided that on that date in 2009, “SHAPER” lacked all distinctive character.  It is not a finding that the mark is invalid.  

22.	In my judgment, there is no reason in principle why a tribunal considering an application of this kind could be precluded from making such a finding.  I do not need to decide whether it would have been open to Mr Landau to find that the earlier trade mark was invalid because he did not do so.  

23.	Counsel for the appellants accepted that it was open to the hearing officer to find that the mark had a very low degree of distinctiveness on the evidence.  In my judgment, that observation of counsel was rightly made.  Clearly there was evidence from Alberto-Culver that Wella’s mark lacked distinctiveness.  The hearing officer was entitled to make such a finding.  Ms McFarland submitted, however, that a finding that the mark lacks all distinctive character is different.  It is not just, as it was put, on the seesaw between distinctiveness and descriptiveness.  Lacking all distinctive character could be characterised as falling off the seesaw altogether.  

24.	In my judgment, a finding that a mark lacks all distinctiveness on a certain date is not a finding of a different character from the assessment of distinctiveness which Mr Landau was required to carry out.  It is a finding that the mark is at the extreme end of the spectrum but nevertheless it seems to me that it is a finding which is open as a matter of principle for a tribunal to arrive at.  

25.	Was it open to Mr Landau to make that finding on this evidence?  At point 3 of Ms McFarland’s case, it is submitted that no reasonable hearing officer could come to that conclusion on the facts.  In paragraph 40, Mr Landau held that a consumer would see the trade mark “SHAPER” as being used to describe a particular type of product, a shaping product, emanating from Sebastian.  He referred to Sebastian because the evidence before him shows use by Wella with the name Sebastian.  For example paragraph 13 of the decision provides pictures showing how the products were marketed between 2004 and 2009: 

26.	The mark “Sebastian” can be seen, followed by the words “SHAPER Zero Gravity” or “RESHAPER” or “SHAPER Fierce”.  

27.	I also note that the way the respondent’s mark has been used was shown in paragraph 15 of the decision of the hearing officer.  There you can see the packaging is marked “VO5 Extreme Style [funkyShaper]”:  

28.	In paragraph 16 of the decision, Mr Landau referred to evidence from Miss Tew, from Alberto, which is said to show the use of the word “SHAPER” by other traders as a descriptive term.  It is clear that there was a heavy attack on distinctiveness in this case and there was evidence on which Ms McFarland accepted it would be open to make a finding that the distinctiveness was low or very low.  It seems to me that it was also open on this evidence to make a finding that the mark lacked all distinctive character.  I also note, and as Ms Edwards‑Stuart submitted, her client’s evidence on lack of distinctiveness from Ms Tew, summarised by the hearing officer in paragraph 16 and 17 of his decision was unchallenged.

29.	Moreover I note that Mr Landau, in reaching this conclusion as a matter of fact that the mark lacked all distinctive character, did so having regard to the presumption of validity.  The first sentence of paragraph 40 refers to the presumption.  It is the subject of section 72 of the 1994 Act.  

30.	It seems to me that Mr Landau’s decision in this respect cannot be faulted.  Accordingly I dismiss ground one of the appeal.  

31.	Ground two of the appeal is the “FUNKY” point.  It seems to me that having decided that “SHAPER” lacks all distinctive character and having also decided that “FUNKY” adds nothing distinctive to “SHAPER”, the logic of Mr Landau’s decision is entirely correct.  Neither mark could be taken by the average consumer as an indication of origin and that is why there is no likelihood of confusion.  Relevant confusion means confusion as to trade origin.  That is why Mr Landau referred to the passage from Canon which makes the point that confusion is about the sources of the goods in the passage just before the end of paragraph 40.  

32.	Ground two of the appeal would have been different if I had accepted ground one, in other words if “SHAPER” had some distinctiveness about it albeit very low, then if “FUNKY” adds nothing, I can see some force in the argument made by Ms McFarland.  However, of course, Miss Edwards‑Stuart has her respondent’s notice, which in many ways is similar to Wella’s appeal, to say that “FUNKY” does not add nothing but it adds something albeit maybe not much.  However, in my judgment, ground two cannot support this appeal if I have rejected ground one.  If “SHAPER” is not distinctive at all in the first place and if “FUNKY” adds nothing, then as Mr Landau said, neither mark would be seen as an indication of origin and there is no likelihood of confusion.  

33.	Accordingly I will dismiss the appeal on ground two.  

34.	Ground three is not really a separate ground.  As I have already decided, it seems to me that there was evidence before the hearing officer on which he could come to the necessary factual conclusions which he did come to which form the basis of this decision.  I will therefore dismiss this appeal.  

35.	I will finish by thanking both counsel and those instructing them for the orderly and focussed way in which this appeal has been prepared and presented.  

36.	I will deal separately with the question of confidentiality when the matter concludes.