A further 19 decisions have issued since the second article in this series and the success rate remains consistently low, with just two successful decisions in the period of September 2020 to December 2020 – this gives a total of eight successful appeals in 2020, out of 61 substantive decisions.
The most recent set of decisions includes the first decision from the newest Appointed Person, Dr Brian Whitehead, but that decision related to an application for security for costs rather than a substantive decision.
In O/522/20 Affinity Leasing Limited (“Leasing”) appealed against the invalidation of their registration of the mark AFFINITY, which was registered in relation to financial services and vehicle leasing services in class 39. The registration was invalidated under sections 3(1)(d) (signs customary in the trade) and 3(1)(b) (lack of distinctive character), but the Hearing Officer judged it unnecessary to reach a conclusion under section 3(1)(c) (descriptiveness). The key question was whether the mark AFFINITY had become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which it was registered.
The evidence showed that the word “affinity” had increased in prominence of use in recent years to describe loyalty schemes, particularly for certain kinds of employment benefits, but it was not the case that word was used in relation to the services covered by Leasing’s registration. It was also recognised that the use of the word was increasing, particularly during the period after Leasing started use but before it applied to register. Daniel Alexander QC, acting as the Appointed Person, found the Hearing Officer was too ready to find against Leasing under 3(1)(d) – the evidence that was submitted was not sufficiently specific to merit prevention of registration on that ground.
The evidence presented was at too general a level and it failed to show use of the word in relation to the specific services under consideration. Also the evidence, in so far as it was specific, related to internal “affinity” schemes and not the more general concept of vehicle leasing services. This was plainly a close decision with the Appointed Person noting that his own view of the strength of the evidence did not remain constant throughout his review and that a finding under section 3(1)(d) should be particularly hard to dislodge.
However the Hearing Officer’s decision under section 3(1)(b) was upheld and, at the request of both parties, a decision was also made by the Appointed Person under section 3(1)(c) – that decision also went against Leasing so ultimately, despite successfully appealing the decision relating to section 3(1)(d) they lost their registration.
The Society for Worldwide Interbank Finance Telecommunications SCRL (“SWIFT”) appealed a decision to reject their oppositions to various applications of Swiffpay Limited to register the mark SWIFFPAY in a plain and stylised form.
SWIFT arrange money transfers between countries. In her decision O/524/20, Appointed Person Amanda Michaels initially dealt with a number of areas where SWIFT’s appeal amounted to no more than an attempt to reargue the Hearing Officer’s decision. However, SWIFT picked up on an inconsistency in the Hearing Officer’s assessment as to the impact of the substantial use which had been made of SWIFT’s mark. In relation to reputation for the purpose of s5(3) the Hearing Officer referred to a strong reputation but, in relation to the inherent distinctiveness of the marks, she indicated that distinctiveness was only enhanced to a medium or slightly higher than medium level. Also in relation to the assessment of the likelihood of confusion, the Hearing Officer made a detailed assessment of Swiffpay’s marks and the similarity to the earlier marks of SWIFT, but was extremely brief in her reasoning explain her global assessment of the likelihood of confusion. As the global assessment did not sit squarely with the detailed reasoning it was not possible for the Appointed Person to be certain that the Hearing Officer had properly accounted for all her findings. In combination with the discrepancy regarding reputation, the insufficient reasoning in relation to the global assessment was sufficient to overcome the high barrier relating to appeals on multifactorial issues such as the likelihood of confusion. The decision was remitted back for decision by another Hearing Officer.