TSS strikes it lucky
Small differences had a big impact, observes Rebecca Campbell. O/236/18, TSS Facilities (Opposition), 16th April 2018
O/236/18, TSS Facilities (Opposition), 16th April 2018
Key points
- Short marks, including acronyms, can be difficult to enforce, as small differences can be striking
- It is important to ensure that evidence of enhanced distinctiveness, reputation or goodwill directly relates to the services claimed, rather than vague categories or buzzwords
- Goods can be considered identical where a more general category in a later application includes goods covered by an earlier mark
On 28th January 2016, TSS Facilities Ltd (the Applicant) applied to register the TSS Facilities logo in relation to “Installation, maintenance, servicing and repair of air conditioning, refrigeration, heating, ventilation, water treatment and hygiene apparatus; information, advice and consultancy in relation to the installation, maintenance and repair of air conditioning, refrigeration, heating, ventilation, water treatment and hygiene apparatus; electrical installation services” in class 37. ISS World Services A/S (the Opponent) opposed the application under ss5(2)(b), 5(3) and 5(4) of the Trade Marks Act 1994. The Opponent relied on three earlier EU and international trade marks for its ISS logo and a range of goods and services in classes 9, 35, 37, 39, 40, 41 and 42 (limited to class 37 in final submissions). Both parties filed evidence, and the Opponent was asked to show proof of use, reputation, goodwill and enhanced distinctiveness.
Starting point
The Hearing Officer (HO) started by rejecting the case under s5(2)(b). She took one of the Opponent’s earlier EU marks, which was not subject to proof of use, as a starting point, and held that the contested services were identical, or in some cases at least highly similar, to those covered by the earlier right (in accordance with the principle outlined in Meric ).
Although both parties adduced evidence that they provided facilities management, the HO declined to make an assessment regarding these services, as the respective specifications did not refer to them. The average consumer was found likely to be a member of the general public (such as a homeowner or landlord) or a business with a higher than average degree of attention. The evidence provided in support of enhanced distinctive character was insufficient, as much of it was broad, referring to general services or, in the case of global annual turnover for one sector, not broken down by country. The phrase “facilities management” was also said to be a “buzz word” that did not provide a clear indication of the services involved.
Striking difference
Assessing the similarity of the marks, the HO stated that “small differences can indeed make a striking difference in short marks”. Although the marks shared the letters SS, there was a low degree of visual similarity. Aurally, the degree of similarity was low to medium and the conceptual position was neutral, with both marks likely to be identified as abbreviations for the names of the organisations. The marks were simply not similar enough to cause direct or indirect confusion.
The grounds under ss5(3) and 5(4) also failed. The evidence filed did not establish a reputation. Although the Opponent had acquired valuable goodwill as a cleaning company, evidence of sales or marketing had not been provided for other services. Further, use of the contested mark would not constitute a misrepresentation to the public even where identical services were involved, as the contested mark was unlikely to be mistaken for the earlier marks. The opposition therefore failed in its entirety.
Note: the official status of the contested application at the time of writing is “published”.
Rebecca Campbell is a Part-Qualified Trade Mark Attorney at Marks & Clerk