Trade

Trade marks - opposition to registration - likelihood of confusion with existing mark - to be considered in context of likely users of goods and channels through which goods tradedSouth Cone Inc v Bessant and Others (a partnership trading as 'Reef'): ChD (Mr Justice Pumfrey): 24 July 2001The applicants, the members of a rock band known as 'Reef', applied to register the word 'Reef' as a trade mark in classes 25 ('T-shirts, sweat shirts, jackets hats and headbands all being promotional or souvenir articles relating to a music group') and 26 ('Badges buckles and ornaments all for wear; tie clips; buttons').The opponent opposed the registration of the mark on the basis that it infringed their own prior mark consisting of the words 'Reef Brazil', registered in class 25 as of 6 April 1988 in relation to footwear, as the two marks were sufficiently similar as to give rise to a risk of confusion alternatively because its use as an unregistered mark would have been prevented by the law of passing off.The principal hearing officer acting for the Registrar of Trade Marks dismissed the opposition.

The opponent appealed on the ground that the hearing officer had failed to give adequate consideration to the channels through which the goods would be sold or the likely users of those goods, since the opponent's sandals bearing the 'Brazil Reef' mark were primarily sold in shops catering for surfers, a group to which the applicants' music was known to appeal.Christopher Morcom QC (instructed by Ashurst Morris Crisp) for South Cone.

Roger Wyand QC (instructed by Statham Gill Davies) for Reef.Held, allowing the appeal, that while it was not legitimate to vary the mark under consideration by considering how it was used in practice, fair use of the opponent's mark as registered had to encompass versions in which 'Brazil' did not play a prominent role; but that the hearing officer's finding that the opponent's evidence of a reputation in the word 'Reef' alone did not assist them was correct; that the global comparison called for in these cases was intended to look at whether the marks were so close, having regard to the goods in respect of which they were registered, that there was a likelihood of public confusion; that the hearing officer had nevertheless erred by failing to consider such matters as the channels of trade and the users of the goods; that as those were an essential part of the comparison called for by section 5(1)(b) of the 1994 Act, the court could substitute its own appraisal for that of the hearing officer; that there was a substantial overlap in the potential customers targeted by applicant and opponent; that the applicant's mark consisted of a prominent, potentially distinctive part of the opponent's mark; that fair use of the applicant's mark would have included use of the mark on parts of garments traditionally indicating the trade origin of the goods; that use of the applicant's mark would have included sale in shops selling the opponent's footwear; that there was therefore a likelihood of confusion between the marks, of a kind which might not necessarily be undone even after a close inspection of the goods; and that the hearing officer's determination would be reversed on that point.