Opposition hearing
Filing its opposition against SKA Trading’s application, Shine TV argued that the ‘Mister Chef’ mark had been filed in relation to identical goods and was sufficiently similar to its own marks to risk consumers confusing the marks and / or leading them to believe that there was a link between SKA Trading and Shine TV. They also sought to rely on the notoriety of the MasterChef marks to argue that SKA Trading’s use of the ‘Mister Chef’ mark would take unfair advantage of their reputation and / or cause detriment to them.
At the initial hearing, the Hearing Officer found the goods to be identical and the marks to be visually and aurally similar to “quite a high degree”. However, in agreement with our client’s submissions, the Hearing Officer found that the marks had quite distinct meanings when compared as wholes. He reasoned that ‘MISTER’ was plainly a title for an adult male, whereas ‘MASTER’ would be understood as meaning “a skilled practitioner of a particular art or activity”. On this basis, the Hearing Officer concluded that there was no likelihood of confusion amongst average consumers as the marks differed conceptually and were therefore dissimilar overall.
Appeal
Following the initial hearing, Shine TV appealed the decision on the grounds that the Hearing Officer had not taken the correct approach to assessing the conceptual similarity of the marks.
Settlement discussions ultimately failed and therefore the matter proceeded to the appeal hearing.
Shine TV were of the opinion that the Hearing Officer had only considered one possible conceptual interpretation of the word ‘MASTER’ in his decision. Shine TV therefore sought to argue that, had the Hearing Officer carried out a proper analysis of all the available meanings of the word and the perceptions of the average consumers, other possible meanings would have been mentioned in the decision. Namely, that ‘MISTER’ and ‘MASTER’ could be viewed as similar if “title used by a boy not old enough to be called Mr” was taken into account as a possible interpretation.
Dismissing the appeal, the judge found it was clear from the Hearing Officer’s decision that the possibility of the word ‘MASTER’ carrying more than one meaning had been taken into account, even if not expressly mentioned in the main body of the decision. The judge concluded that, despite being conscious of the fact that other interpretations were possible, the Hearing Officer made his decision in line with our astute interpretation of the relevant law that the meaning of a mark must be identified in the context of the mark as a whole.
The Hearing Officer had therefore correctly selected the third possible meaning cited in the Oxford English Dictionary – “a skilled practitioner of a particular art or activity” – as the meaning that the average consumer would be most likely to understand when the word ‘MASTER’ was used in conjunction with the word ‘CHEF’. As such, the average consumer would not perceive any other likely meaning. The judge further agreed with our submission that it would be unfair to infer that the Hearing Officer had simply not considered other possible meanings for the word ‘MASTER’ in their analysis of conceptual similarity. The correct approach to assessing the conceptual similarity of the marks had therefore been applied.
Costs
Since SKA Trading was the successful party, they were entitled to recover a proportion of their legal costs. Eventually, a sum of £22,000 was agreed upon by the parties.
Conclusion
This case is an important reminder to all practitioners that an appeal of a UK IPO opposition decision will only be successful where there has been a clear error of law made by the Hearing Officer or an incorrect interpretation of the facts have been made when determining the outcome of an opposition. In this case, the Appellant’s arguments were inane, at best. The Hearing Officer’s decision in this matter was based on a sound application of the law to the facts and it is unlikely that any judge would have overturned the decision.
