• IN THE UK OFFICE

    What Is the Meaning of This?

    Conceptual Differences May Be More Important in the U.K.

    In the Autumn 2004 edition of Make Your Mark, we reported on decisions of the CFI concerning the relative weight of conceptual similarities and differences between marks. In a recent ex parte appeal from the U.K. Registry, however, the Appointed Person drew a rather different conclusion in finding that conceptual differences prevailed over other similarities in a case concerning CARDINAL and CARDINAL PLACE.

    The applicant, Land Securities Plc, had applied to register CARDINAL PLACE as a trade mark for various property-oriented services in Class 36. During examination, the examiner cited the earlier trade mark CARDINAL in block capitals and incorporating a small (rather insignificant) diamond-shaped device over the letter ‘N’. The earlier mark covered services in Class 36 including “financial services.”

    At the hearing, the hearing officer held that the dominant and distinctive element of each mark was the word CARDINAL and the CARDINAL PLACE services were encompassed by the “financial services” covered by the earlier slightly stylised CARDINAL. Despite expressing doubt that direct confusion would occur due to conceptual differences, the hearing officer nevertheless found that the meaning of CARDINAL did not change by adding the less distinctive word PLACE. The CARDINAL PLACE application was rejected.

    On appeal, Land Securities argued that the hearing officer had not given sufficient weight to the differences between the marks.

    The Appointed Person agreed. He considered that the addition of PLACE to CARDINAL did change the meaning of CARDINAL from ecclesiastical to locational. That effect made the visual and phonetic differences all the more significant. Consequently, the marks were distinguishable, and he set the Registry decision aside.

     

    Comment

    In the writer’s view, the Appointed Person’s conclusion is surprising.

    The dominant and distinctive element of both marks is the word CARDINAL. It is distinctive simply because it is so unusual when applied to any services not of an ecclesiastical nature. In contrast, the word PLACE is used frequently in conjunction with other words to indicate where services are provided. Having regard to that element, the Registry’s decision that confusion was likely should have been upheld.

    The Appointed Person’s approach tends to suggest that greater weight may be placed on conceptual differences when assessing a likelihood of confusion between marks in the U.K. office, particularly where the marks consist of a word with a meaning and one that combines that word with a qualifier.

    Moreover, it is odd that the Appointed Person ordered the application to be remitted to the Registrar to enable the applicant to restrict the specification of services in line with an unconditional offer to delete certain services and qualify the remainder as being property services in the form of interests in land and buildings. The Appointed Person considered the appeal on the basis that the application would be amended as proposed if it was not refused. Consequently, despite the finding that the marks were distinguishable, the application could still have been rejected if the amendment proposed was not deemed acceptable by the Registrar following the ECJ’s decision on specification clarity in POSTKANTOOR.

    In the event, the Registry accepted the amendments. The remaining services have now been qualified as services “wherein property in relation to all the aforesaid services relates solely to interests in land and buildings.”

    The owner of the earlier cited CARDINAL mark can still oppose, however. Whether there will be a second round in this dispute therefore remains to be seen.