Sean Hutchinson

July 2021

Background

On 26 September 2019, Mr Benedict Johnson applied to register a UK trade mark for the term “Winesapp” and an accompanying image. The trade mark related to an app he had created for Sommelier services.

Wineapp Limited, who had created an app for the retail of wine, then filed an opposition to Mr Johnson’s trade mark application in which they argued that Mr Johnson’s mark was similar enough to their unregistered sign, which comprises the term “Wineapp” and an accompanying image, that his mark amounted to passing off.

The Decision

Wineapp Limited demonstrated that, prior to the filing date of Mr Johnson’s application, they had generated a turnover of slightly above £165,000 through the use of their app and that their app had been downloaded approximately 33,000 times.

In a previous High Court decision, namely that of Discount Outlet v Feel Good UK, the Judge set out three tests a Claimant would have to meet in order to demonstrate that passing off had occurred:

1. The Claimant must demonstrate that his mark has established goodwill or reputation by the relevant date

2. The Claimant must demonstrate that the Applicant has misrepresented his mark to such an extent that there would have been deception or a likelihood of deception

3. The Claimant must demonstrate that he has suffered damage as a result of the misrepresentation.

Each of these three tests was assessed in turn by the Hearing Officer.

Starting with the first test (the “goodwill” test), the Hearing Officer noted that Wineapp Limited’s turnover of slightly above £165,000 was “on the low side but not a negligible sum.” Accordingly, the Hearing Officer concluded Wineapp Limited had successfully demonstrated that goodwill had been established by 26 September 2019 in relation to the retail of wine via an app. The Hearing Officer also concluded the unregistered sign Wineapp Limited was relying upon had assisted in establishing this goodwill. Therefore, Wineapp Limited was deemed to have met the goodwill test.

The Hearing Officer then turned to the second of the three tests (the “misrepresentation” test). When assessing this, the Hearing Officer referred to the case of Office Cleaning Services Limited v Westminster Window & General Cleaners Limited, in which it was decided that the public would exhibit a high degree of discrimination between marks containing words in common use, in this case the words “wine” and “app”.

The Hearing Officer also referred to the teachings of Halsbury’s Laws of England Vol. 97A (2012 reissue), which led to the conclusion that misrepresentation would only be demonstrated if Wineapp Limited could convince the Hearing Officer that Mr Johnson’s mark and their unregistered sign are sufficiently similar that the public would mistakenly believe the two businesses, or their products, are connected to each other.

Accordingly, the Hearing Officer decided the public would consider both the terms “Winesapp” and “Wineapp” to relate to apps related to wine, including apps for the retail of wine. The Hearing Officer also decided the public would be more likely to rely on the visual components of the two marks to distinguish between these and thus it would be more important to consider the similarity of the visual components than the similarity of the text components, in this case.

The Hearing Officer noted Mr Johnson’s mark comprises a white letter “W” on a red background, wherein the shape of the letter “W” results in the silhouettes of two wine glasses being visible, whilst the unregistered sign belonging to Wineapp Limited comprises an image of a filled wine glass. The Hearing Officer concluded these two images are sufficiently different that the public would not mistake the two for each other. Accordingly, it was concluded that Wineapp Limited had failed to meet the misrepresentation test.

On the grounds that without misrepresentation there cannot have been damage, the Hearing Officer also concluded that Wineapp Limited had failed to meet the third of the three tests (the “damage” test).

As a result, the Hearing Officer decided the opposition brought by Wineapp Limited was unsuccessful and permitted Mr Johnson’s application to continue.

Conclusions

The central aspect of this dispute was whether the differences between the visual components of two marks is sufficient to offset the remarkably close similarity between the text components of the two marks when attempting to distinguish one from the other.

Whilst the terms “Winesapp” and “Wineapp” are almost identical in their pronunciation, this case clearly sets out that the wording alone is not the only important feature to consider.

The UK IPO has confirmed in this case that the differences between the visual components of trade marks are also of vital importance, particularly in instances where the consumer is likely to rely heavily on the visual components to distinguish between these marks. If the consumer is likely to rely more heavily on the visual components of two marks than the text components to distinguish between these, it seems there is a greater chance of the UK IPO deciding that the two marks are different than in instances where the consumer is more likely to rely on the text components instead.

Accordingly, when preparing an argument for a passing off claim, it is important for the parties involved to consider which features of the marks involved the consumer is most likely to rely upon when attempting to distinguish between them. In cases where the consumer is more likely to rely on the visual components of the marks, a greater degree of similarity may be permitted between the text components of the marks compared to cases where the consumer is more likely to rely on the text components of the marks to differentiate between the two.

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