Court Diary

A Bad Odour Between Air Fresheners

In an appeal to the High Court (Mr Justice Ferris) in an opposition brought under the 1938 Trade Marks Act, (L&D v Julius Samann), the Court, rather surprisingly, found that an application for a device mark prominently bearing a distinctive word mark was confusingly similar to an earlier, similar device mark also bearing a distinctive word mark.

L&D had filed a UK trade mark application for the label of a shaped car air freshener. The label had the shape of a crescent moon beneath an arrowhead. On the label were the phrase Aire Alpino and the letters LD, together with a landscape of mountains and pine trees. The label can be seen at www.ld-aromatics.com/aa.htm. This application was opposed by Julius Samann on the basis of three earlier UK trade mark rights, one of which was for a label in the shape of a pine tree and bearing the phrase Magic Tree. The opponent's registration also covered car air fresheners. Their Magic Tree label can be seen at www.directdistribution.uk.com/.

The Hearing Officer accepted that, if the two labels were compared side by side, there would be no confusion. However, he went on to consider the question from the point of view of the ordering consumer who does not have the advantage of the two marks side by side. He decided that the most significant detail of both marks was their shape and that both conveyed the overall idea of a tree device. In the case of the earlier mark this was because it was in the shape of a tree. In the case of the later mark this was because of a combination of a shape that could be viewed as tree like and a pictorial representation of pine trees. The fact that both marks contained distinctive and distinguishable word marks did not help where it was the idea of the mark which overwhelmed other considerations and where little attention was paid by the consumer when making a low cost, probably impulse purchase. It followed from this that the two marks were confusingly similar and the opposition succeeded.

The applicant appealed to the High Court. The main ground of appeal was that the Hearing Officer was wrong to characterise the idea of the applicant's mark as being a tree. The applicant submitted that he ought to have characterised the idea as being alpine air, given the presence of the words Aire Alpino and a mountain scene on the label. The Judge (Mr Justice Ferris) disagreed and upheld the Hearing Officer's decision. He commented as follows:

• Referring to the presence of the words Aire Alpino on the mark applied for, "The marks are applied to inexpensive products likely to be purchased in circumstances when little or no consideration is given by the customer to verbal differences".

• A prominent feature of the alpine scenery on the mark applied for was a number of pine trees reminiscent of the shape of the earlier mark.

• The characterisation of the idea of a mark is very much a matter of impression on which the views of a Hearing Officer with long experience must carry great weight.

• An appeal is confined to a review of the decision of the lower court and is not, unless the appeal court expressly orders otherwise, a complete rehearing. It would only be proper to interfere with a decision of the Trade Mark Office if it was demonstrated with reasonable clarity that the decision was wrong. This was even more the case since the introduction of the 1998 Civil Procedure Rules. See also the unreported decision of South Cone v Bessant.

• Given that the present case was a fine and difficult decision in relation to the question of confusion, it was all the more desirable to uphold the decision of the Hearing Officer.

Comment

What is particularly interesting about this decision is the finding of confusion between two marks bearing quite different and distinguishable word marks. Why shouldn't the reasoning in this Aire Alpino case be used to prove infringement of distinctive food and drink labels by the look-alike products of UK supermarkets? Such look-alike products bear distinguishable word marks but inevitably copy the idea (or the general look and feel) of the originators' products. Further, such look-alike products are often inexpensive goods which are purchased in circumstances when little or no consideration is given by the customer to verbal differences. If the writer were advising Nestlé, then the next time a major UK supermarket launches a look-alike version of a Nescafé coffee having a distinctive combination of design features, I would sue and rely on the reasoning set out in the Aire Alpino case.