In a ruling on March 12, barrister Daniel Alexander – sitting as a deputy high court judge – upheld a UK IP Office Hearing Officer’s decision, saying it was not “plainly wrong” and should therefore stand.
The ruling came in a dispute between DigiPos Store Solutions and Digi International over DigiPos’s application for the word mark DigiPos in class 9.
Digi International opposed the application on the ground that there was a likelihood of confusion with its marks, notably Digi and Digi International, both registered in class 9.
In May 2007, the UK IP Office Hearing Officer upheld the opposition. DigiPos appealed on 10 grounds.
In his ruling last week, Alexander said that the Reef Trade Mark case in 2003 made it clear that to overturn that ruling he had to be “satisfied that there is a distinct and material error of principle in the decision in question or that the Hearing Officer was clearly wrong”. This was not the case, and he upheld the decision.
But he added: “I have real doubts about the ultimate outcome of the global assessment in this case.”
In particular, Alexander said that European case law, in cases such as Canon and Lloyd Schuhfabrik Meyer, had found that marks with greater distinctive character have a greater capacity to distinguish and that the reverse is therefore true for marks with less distinctive character (such as those that are descriptive).
He explained: “Where the earlier mark, or an element of it, is said to be descriptive of goods or services or otherwise weak, the Registrar must take into account the extent to which the sign has a lesser capacity to distinguish as well as whether it has a greater capacity to distinguish.”
The strength or weakness of the mark is therefore one factor that should be considered in the global assessment of the likelihood of confusion, said Alexander.
The fact that protection can be “ratcheted down” as well as “ratcheted up,” is an important finding, according to David Wilkinson of Stevens & Bolton, who represented DigiPos. “This is the first time the courts have clearly stated that a mark with less capacity to distinguish should give a lower level of protection.”
Wilkinson said that his client would not be pursuing the case any further, despite the unfavourable outcome, but believed that the ruling would be helpful in parallel proceedings over a Community trade mark application.
Andrew Tibber of Burges Salmon, who acted for Digi International, told Managing IP: “This was a case where the unsuccessful applicants were having two bites at the cherry and rearguing their case on slightly different grounds.”
In the appeal, Alexander was also asked to consider the significance of other marks incorporating “digi” that had been registered.
He said that reference to the trade mark register could be useful, though not precedential: “It does not seem to me to be illegitimate, as a matter of principle, to deploy material of this kind for that limited purpose and, for that limited purpose, it is of some value as part of a larger body of material.”
Alexander also said that the approach to file wrapper estoppel in trade mark cases should be similar to that in patent cases: “Reference to the prosecution file in a trade mark case should be discouraged, if not absolutely prohibited.”
