Appointed Person considers status of international trade marks in the UK post BREXIT

In an interesting decision (O/557/21) rendered following an appeal against a decision of an Hearing Officer of the UK Intellectual Property Office (UK IPO), the Appointed Person upheld the Hearing Officer’s decision ((O/474/20) and declared the appellant’s trade mark invalid on the basis of a likelihood of confusion between the marks at issue. In particular, the declaration of invalidity could be based on a prior international trade mark, even if the decision concerning the declaration of invalidity was given after the United Kingdom had left the European Union. The Appointed Person also considered that the goods in question (therapeutic blankets) were similar to bedding blankets.

Senso-Rex (the appellant) successfully obtained a UK trade mark registration for the word mark “GRAVITY” for goods in Class 10 (therapeutic weighted blankets and blankets for medical purposes) of the Nice Classification.

Gravity Products LLC is the proprietor of two international trade marks (EC) for goods in Class 24 (bed blankets). The first registration is for the word mark “GRAVITY” and the second is for the following figurative mark:

In light of a declaration of invalidity submitted by Gravity Products LLC, the Hearing Officer declared the appellant’s trade mark invalid on the basis of a likelihood of confusion, pursuant to section 5(2)(a) and (b) of the Trade Marks Act 1994. That decision was subsequently confirmed by the same Hearing Officer in a supplementary decision in January 2021.

The appellant appealed and raised two grounds of appeal. The first was that a declaration of invalidity could not be based on an international mark (EC) when the decision was given after the United Kingdom had left the European Union. The second was that the Hearing Officer had erred in holding that the goods covered by the earlier mark were similar to those covered by the proprietor’s mark.

As the Appointed Person noted at the outset, the standard of appeal is such that he would need to identify whether the Hearing Officer had made a distinct and material error of principle in reaching her decision.

The earlier trade marks relied upon to obtain a declaration of invalidity were international registrations (EC). The appellant’s position was that all international trade marks (EC) had ceased having effect in the United Kingdom by the time the Hearing Officer’s decision was finalised in January 2021 and so they could not form the basis of any application for invalidity.

The Appointed Person observed that the Hearing Officer had given her preliminary decision on 25 September 2020 and that decision was provisional as the earlier trade marks were international trade marks (EC) and were not yet entitled to protection in the EU under the Madrid Protocol. The registrar was notified on 14 December 2020 that protection would be granted to the international marks in accordance with Chapter XIII of Regulation (EU) 2017/1001 (the EU Trade Mark Regulation (EUTMR)). The Hearing Officer then gave a supplementary decision, essentially confirming her preliminary decision, on 7 January 2021.

The registry required oppositions and declarations of invalidity to be based on EU trade marks and international trade marks (and not their replacements) where the proceedings under the Trade Marks Act 1994 were started before IP completion day. According to section 1A(6) of the European Union (Withdrawal) Act 2018 and section 39(1) European Union (Withdrawal Agreement) Act 2020, IP completion day was 31 December 2020 at 11.00 p.m.

The relevant part of the definition of an “earlier trade mark” is found under section 6(1)(b) of the Trade Marks Act 1994. This provides that an earlier trade mark means: an EU trade mark or international trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark even where the earlier trade mark has been surrendered or its registration has expired. The definition of an international trade mark is found in section 53 of the same Act.

Section 6(1)(b) and 53 of the Trade Marks Act 1994 were repealed by provisions in the Trade Marks Exit Regulations and the International Marks Exit Regulations. However, according to the Appointed Person, even if these provisions had been replaced by other sets of regulations, this made no material difference since the Interpretation Act 1978 had preserved those definitions in relation to any pending legal proceedings such as the present one.

The Appointed Person therefore concluded that sections 6(1)(b) and 53 of the Trade Marks Act 1994 remained in effect during the currency of the present proceedings.

The appellant had submitted that the Hearing Officer should have found that the goods covered by Gravity Products LLC’s mark were dissimilar to those covered by the earlier trade marks, rather than considering that they possessed a medium degree of similarity.

The question before the Appointed Person was whether a therapeutic blanket was similar to straightforward bedding used to cover a bed and keep a person warm. The Hearing Officer had highlighted the different purposes to which the two goods would be put (therapeutic rather than bed covering) and the fact that the therapeutic blankets might have additional properties and be made of different materials. The Hearing Officer had also held that there would be different trade channels. She had further suggested that users of the goods were likely to overlap, in that both types of blankets could be used by members of the general public but that they were not in competition or complimentary to each other.

The Appointed Person considered that the Hearing Officer had gone too far: a “conventional” blanket could never serve as a substitute for a weighted blanket. Where a weighted blanket was used, it would be used instead of a conventional bed covering. For instance, if a weighted blanket was added to an existing blanket arrangement at least one of the conventional blankets would be removed; that is, it would have been replaced by the weighted blanket. Accordingly, there is some competition between the goods even if it is limited and only going one way. This means, in respect of this factor, that the similarity would be slightly greater between the goods than suggested by the Hearing Officer.

All this said, the Appointed Person concluded that the Hearing Officer had considered the right factors and her factual assessments were sound as she had assessed the distinctions made by the appellant in relation to the differences between the goods. Accordingly, the Hearing Officer was entitled to reach the conclusion that she did. The appeal was thus dismissed.

The decision is interesting since it clarifies the status of international marks in the United Kingdom post-Brexit. Apart from the Withdrawal Agreement, which provides that EU trade marks and international trade marks become a comparable registered trade mark in the United Kingdom, the decision confirms that international trade marks and EU trade marks can still form the basis of any application for invalidity, even if finalized after January 2021. However, this is to be read with care and much depends on all the circumstances at hand. The present decision was provisional (dated 25 September 2020) and was subsequently confirmed in supplementary decision in January 2021. Whether this fact was material in reaching the present conclusion is not entirely clear, but the Appointed Person’s reference to the Interpretation Act 1978 seems to confirms the latter interpretation: where the proceedings under the Trade Marks Act 1994 were started before IP completion day (31 December 2020 at 11.00 p.m ) and even if those proceedings were finalized after that date, an international registration could still form the basis of an application for invalidity.