A pukka decision?

1st Dec 2017

Rebecca O’Kelly-Gillard suggests the court may have split hairs here. O/434/17, PUKKA HAKKA (Invalidity, Opposition), UK IPO, 13th September 2017.

O/434/17, PUKKA HAKKA (Invalidity, Opposition), UK IPO, 13th September 2017

Key points

  • The assessment of an English-language slang term must be performed as at the application date of a mark 
  • To hold goodwill in a service, a rights holder must have “a business” in that service; it is not enough to be merely associated with that service

In PUKKA HAKKA, Pukka Pies Ltd (Pies) and Zenobia Kassam and Babar Khan (K and K) each brought actions against one another over the registration and cancellation of various marks incorporating the word “pukka”. K and K brought six opposition and cancellation proceedings against a number of Pies’ marks for variations of “Pukka Pies”; Pies responded with an opposition to the application for Pukka Hakka made by K and K.

The decision of the Hearing Officer (HO) was extensive and serves as a good summary on the law relating to: 

  1. evidence in the form of: comparison of goods and services; marks; and dictionary definitions and use of a term in the press; and
  2. the limits of the extended protection available under ss5(4)(a) and 5(3) of the Trade Marks Act 1994 (the Act). 

K and K sought declarations of invalidity and opposed three of Pies’ registered marks and three applications. K and K argued that “pukka” was a term meaning “authentic, genuine and good” and, as such, that Pies’ marks were devoid of any distinctive character and/or consisted exclusively of signs or indications that served to designate the quality of Pies’ goods under ss3(1)(b) and 3(1)(c) of the Act.

The HO began by assessing the meaning of the term “pukka”, expressing that the important consideration was the meaning of the term as at the various application dates.

In assessing K and K’s evidence, the HO noted:

  • It does not automatically follow that because a word is in the dictionary the average consumer will be aware of its meaning(s). 
  • Context is important when assessing press articles, and care must be taken when using them in evidence. Here, K and K produced only seven press articles, with the HO noting that this was “not a large number if the word were as descriptive as K and K claimed”.
  • If the term being analysed is slang, this will be relevant. Slang fashions come and go, and this affects the analysis of a mark as at the application date. 
  • K and K’s evidence could not prove that “pukka” would have been immediately understood at the relevant dates to denote a laudatory characteristic of the goods and services of Pies’ marks. The HO did not have to deal with K and K’s arguments in respect of s3(1)(b), as they were pleaded on essentially the same basis. K and K’s invalidity and oppositions therefore failed.

Opposition 

Having dealt with the preliminary issue of proof of use in respect of Pies’ marks, the HO went on to extensively examine the likelihood of confusion between K and K’s application and Pies’ marks, starting with the relevant goods and services. As per Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc  (Canon), the relevant factors are “the nature, intended purpose and method of use of the goods and services and whether they are in competition with each other or are complementary”. 

K and K’s application covered a wide variety of goods and services in classes 29, 30, 35, 41 and 43. When taken together, Pies’ marks covered goods in classes 29 and 30, and specific services in class 41. 

The HO found identity in respect of specific goods in classes 29 and 30, and specific services in class 41. She then went on to consider K and K’s non-identical goods and services. From that comparison, the following principles can be drawn: 

  • Even if all of the goods concerned are foods and all are eaten by the general public, this is not enough for a finding of similarity.
  • Although there may be an element of competition between goods, this does not necessarily mean they are similar, particularly if they would be found in different locations in a retail environment.
  • When comparing retail services against goods, there may be some similarity based upon complementarity and shared trade channels; the goods do not have to be identical to the subject goods of the retail service; and the level of similarity may be weak depending on the presence or absence of the other Canon factors. 

The HO then compared Pies’ marks with K and K’s stylised PUKKA HAKKA. Applying the principles from Sabel BV v Puma AG , the HO found:

  • a low to medium degree of visual similarity between Pies’ composite earlier marks, with this degree of similarity slightly rising in respect of Pies’ marks that consisted solely of PUKKA;
  • an above medium level of aural similarity between the marks; and
  • an average consumer would not know what HAKKA meant: the application created the impression of two words that have no immediate meaning. Conceptually, therefore, the comparison of the marks was considered neutral.

After reviewing Mr Justice Arnold’s decision in Whyte and Mackay Ltd v Origin Wine UK Ltd and Another  (concerning the JURA ORIGIN mark), the HO concluded that, unlike JURA ORIGIN, PUKKA HAKKA did not form a unit with a different meaning to its components taken separately. The dominant and distinctive element of the mark, therefore, was PUKKA. 

As such, and taking into account Pies’ more recent PUKKA PIE DAY mark upon which it could rely for all of the goods and services registered, the HO found a likelihood of indirect confusion in relation to the identical goods and services. Pies’ claim, however, failed in respect of K and K’s goods and services that were not identical (in summary, these were services in classes 35, 41 and 43). 

Final grounds 

As Pies’ s5(2)(b) ground only partially succeeded, the HO went on to consider its submissions under ss5(4)(a) and 5(3) of the Act. 

Section 5(4)(a)

Pies’ claim under s5(4)(a) was essentially the same as its claim under s5(2)(b). However, it was argued that Pies’ goodwill extended to a goods and services classification that was wider than the specification of its marks, in particular in respect of classes 35, 41 and 43.

The HO analysed what constitutes goodwill, emphasising that it is the benefit and advantage of the good name, reputation and connection of a business (HO’s emphasis). With this emphasis in mind, the HO determined that Pies did not have goodwill in any of the following:

  • “advertising display apparatus and refrigerated food display apparatus”; 
  • “games software”;
  • “advertising, including promotion and products of third parties through sponsorship arrangements”; and
  • “business advisory services in relation to the reduction of carbon footprint and charitable contributions to food banks”.

In respect of all the above, the HO placed great importance on the fact that Pies did not have a business in any of the goods/services claimed. In particular, it never made any sales in respect of any of the above; as such “there [was] no attractive force bringing in custom”.

This is an interesting argument, and one that some would argue splits hairs too finely. For example, the finding that sponsorship of third parties did not constitute a “business in advertising”, but was merely a method of advertising one’s own goods, was arguably arbitrary and somewhat unfair in light of the commercial reality of advertising.

Section 5(3)

Finally, Pies sought to argue that K and K’s application would take unfair advantage of, or be detrimental to, the distinctive character or repute of its earlier marks.

Although the HO found that Pies had inherent distinctive character and that this had been enhanced through use, this distinctive character was limited to pies. A link would not necessarily be made between marks with a reputation attached to pies and the application in relation to the surviving services, even those relating in some way to food. 

Conclusion

This decision highlights the benefits of registering a range of different marks and continuing to expand a trade mark portfolio to ensure the broadest protection possible. It further reinforces the requirement to be specific concerning the goods and services applied for, especially given the narrow interpretation of what could be considered as constituting “having a business in” for the purposes of s5(4)(a).

Rebecca O’Kelly-Gillard is a Senior Associate at Bird & Bird LLP

Thomas Pugh, an Associate at Bird & Bird, was co-author.

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