HERNO v Mr. Heron – JMW Wins appeal to the Appointed Person

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HERNO v Mr. Heron – JMW Wins appeal to the Appointed Person

JMW’s Intellectual Property team have secured a resounding win for their client, Miss Sparrow, in an appeal to the Appointed Person in relation to a trade mark opposition at the UK Intellectual Property Office in relation to the mark, “Mr Heron”.

This decision marks the end of a two year legal battle between JMW’s client, Miss Sparrow, and HERNO S.p.A, an Italian clothing retailer.

An Appeal to the Appointed Person at the UK Intellectual Property Office is one of the two avenues of appeal (the other being court) available to a party where a hearing officer has passed a decision on grounds they do not agree with. They can often involve complex questions of trade mark law.

The Parties

Miss Sparrow is an online retailer, selling various clothing products from the website. Mr Heron is one of Miss Sparrow’s sub-brands, and on 7 June 2020, they made an application for the word mark at the UK IPO.

The Opponent, Herno SPA, an Italian fashion brand, owns figurative UK trade marks pictured below:

Herno opposed Miss Sparrow’s application for “Mr Heron”, on several bases including that the marks were similar and that there was a likelihood of confusion.

First Instance

In the first instance decision, the hearing officer considered that the marks had a ‘low to medium degree’ of visual similarity, a low degree of aural similarity and the marks were conceptually dissimilar.

JMW had argued throughout that “Mr. Heron” had a strong conceptual allusion to the bird, while “Herno” had no clear meaning in the English language.

The Hearing Officer concluded that the conceptual differences between the marks are too great to be unnoticed by an average consumer, even when identical goods are in question. She held the marks to be too dissimilar for a likelihood of direct confusion to arise and dismissed the possibility for a likelihood of indirect confusion (where a consumer does not mistake the marks, but thinks there is an economic link between the traders).

Appeal Decision

Herno SPA appealed on the primary ground that the Hearing Officer “had made an error of law in the way in which she had considered the fonts in which the two marks appeared”.

JMW submissions argued that since the Opponent’s earlier mark is figurative mark, its figurative visual elements should inform its scope, even when considering it against a later word mark (which has no figurative elements).

By contrast, the Appellant essentially argued that it was “wrong to treat the ‘font’ of an earlier ‘device mark’ as something which can be taken into account when comparing that mark to a contested ‘word mark’”. Additionally, or in the alternative, the Appellant argued that the later Application Mark (a word mark) should be considered in exactly the same stylised font as the earlier device mark.

The Appointed Person pointed out that the Appellant’s approach would “give rise to serious practical difficulties”, stating that the argument “removes a potentially distinctive element from the HERNO mark and effectively turns it into a word mark”.

Having reviewed the case law presented, and specifically, Calvin Klein Trademark Trust v OHIM, T-185/07, the Appointed Person concluded that “it is not legitimate to perform a comparison between a word mark and a stylised word mark by considering specific ways in which the word might be presented”.

The Appointed Person also dealt with question of likelihood of confusion in the matter. At paragraph 48 of his decision, he said that there is no likelihood of confusion between the marks. He explained there was no risk of confusion as the presence of the word “MR in MR HERON would always be noticed by an average consumer”.

This was another point argued by JMW throughout the case, that the word “Mr.”, particularly when the Application Mark is spoken adds aural and conceptual distinctiveness, cannot be ignored in a global appreciation.

Finally, the Appointed Person considered the Opposition to be a classic instance of a PICASSO/PICARO-type case, “where the power and individuality of the concept of the contested mark overwhelms the impact of any visual similarities which may exist and removes any serious risk of confusion, whether direct or indirect.”

Take Away

When seeking to protect your brands, the manner in which they are applied for and appear on the register will be vitally important to any enforcement that is to follow (whether in an opposition or infringement proceedings).

In summary, word marks generally have the widest scope, in that they are not restricted by figurative or visual elements present in figurative or stylised marks. As this appeal shows, if you employ a figurative mark against a contested word mark, you cannot at that point try to extend the scope of a figurative mark or hypothesise about the font/stylisation that the contested word mark should be considered.

Given this, it is important for clients to take expert advice on the form/type in which their trade marks should be registered. In addition, if you do end up opposing an application, or having to appeal an opposition decision that has gone against you, the IP Team at JMW are experts in such cases and will happily assist.

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