Regular readers of Make Your Mark will be aware of the unjustifiably broad rights that are often given by OHIM and the European Court to the owners of earlier marks containing a non-distinctive or descriptive element.
An opposition (Shahin Ahmed v MW Eat; O-209-15) recently decided by the UK Trade Mark Office shows how these things could be handled.
Mr Ahmed had applied for a UK trade mark application covering the trade mark Masala Empire in Class 43. MW Eat opposed based on three CTM registrations covering identical and highly similar Class 43 services for the marks Masala, Masala Express and Masala Zone.
The evidence submitted by Mr Ahmed, although somewhat limited, went some way towards confirming that Masala means a mixture of spices and is used as part of the second most popular foreign dish in the UK, Chicken Tikka Masala, as well as showing that there are numerous Indian restaurants in the UK containing the word Masala in their names.
On the other hand, the opponent’s evidence, which sought to establish a goodwill and reputation in their earlier marks for restaurant services, was also rather limited and failed to convince the Hearing Officer (Mr Allan James) that any such goodwill/reputation existed at the filing date of the opposed UK trade mark application. Although he accepted that the trade mark Masala Zone had been used as the name of a restaurant in London, the evidence of use was insufficient to establish a reputation for restaurant services.
Given the identity/close similarity of the two sets of (Class 43) services, the case came down to a comparison between the mark applied for Masala Empire and the opponent’s earlier marks, Masala, Masala Express and Masala Zone.
Mr James accepted that the common element Masala was low in distinctiveness for food related services. He made a similar finding in relation to the word Express present in one of the opponent’s earlier marks. By contrast, the Hearing Officer found that the word Empire in the opposed mark was distinctive (for food related services) and not the sort of word that one would expect to find as a sub-brand or a brand extension. Finally, given the opponent’s failure to substantiate the use of its trade marks in the UK, Mr James also rejected their argument that the trade mark Masala Empire would be seen as a brand extension of the earlier trade marks Masala Express and Masala Zone.
All of this led the Hearing Officer to conclude that the average UK consumer, paying a normal level of attention, would not confuse the mark applied for (Masala Empire) with any of the earlier marks (Masala, Masala Express or Masala Zone), either directly or indirectly. Mr James therefore rejected MW Eat’s Section 5(2)(b) ground of opposition (likelihood of confusion).
Given the limited evidence of use (or goodwill and reputation) that had been filed by the opponent, the Hearing Officer also decided that the trade mark Masala Empire would not take unfair advantage of, or be detrimental to, the reputation or distinctive character of any of the opponent’s marks, in particular Masala Zone. He therefore also rejected the Section 5(3) ground of opposition.
Under Article 37(2) of the CTM Regulation, OHIM may request that, as a condition for registration, the applicant states that he disclaims any exclusive right to such element. Of course, they never do. However, if they did, and if such a practice were combined with a practice under which a disclaimed element in an earlier trade mark were given no or very little weight when making a comparison with a later mark containing the same (disclaimed) element, then we might be one step closer to having a commercially sensible practice when comparing marks in EU opposition and infringement proceedings.
In short, we might have more decisions of the type issued by Mr James in the Masala Empire case.