Yell Silenced On Appeal

Rosalyn Newsome sets out why ıı grounds weren't sufficient for success

Yelp! Inc ("the Applicant") applied on ı7 December 2008 to register a UK Trade Mark 2505006 YELP & Device (series of four, "the Mark"). The Application was for a wide range of services in classes 35, 38, 4ı, 42 and 45.

The Mark was opposed by Yell Limited on the basis of Section 5(2)(b) under Opposition 99222. Seventeen earlier Trade Marks were relied upon, with the strongest rights held to be Community Trade Mark Application 2ı72682 YELL & Device and UK Registration 245ı074 YELL.COM. The Hearing Officer, Oliver Morris, in his decision of ı6 June 20ıı, determined that he would consider the merits of the Opposition for those two earlier Marks, because if the Opponent were unsuccessful for these Marks the Opposition would fail for the remaining Marks. Similarly, he restricted his examination to certain services in class 35, which were deemed identical.

Proof of use was not required for either of the earlier Marks, but lengthy evidence, as well as written submissions, were filed by the Opponent. Nonetheless, the Hearing Officer did not find the Marks sufficiently similar for a likelihood of confusion and the Opposition was unsuccessful. Yell Limited filed an appeal against the decision relating to this assessment and also sought permission to adduce new evidence. It is worth listing the numerous grounds for the appeal (all of which failed):

1) The Hearing Officer over-analysed the Marks.

2) & 3) He did not find enough degree of conceptual similarity.

4) He misapplied the law concerning distinctive/dominant components when considering visual similarity.

5) This affected the decision on aural similarity.

6) Too high a level of attention was allocated to the appropriate consumer.

7) The above points vindicated the assessment of a likelihood of confusion.

8) The Hearing Officer failed to consider how confusion might have arisen.

9) The Opponent sought to adduce fresh evidence.

10) The Hearing Officer gave insufficient weight to the reputation of the earlier Marks.

11) The Hearing Officer wrongly took comfort in the lack of evidence of actual confusion.

An Appeal is not a re-hearing of the facts, but should question a decision based on an error in the application of the law or a clear material error.

On the first ground of appeal - that the Hearing Officer had over analysed the Marks following the classic analysis on a visual, phonetic and conceptual Case in point: O/021/13...