Navigating trade mark clearance: lessons from the ATHLETA vs. ATHLECIA trade mark case on likelihood of confusion

One of the most difficult tasks for any brands lawyer is to clear a new brand for use. This usually involves commissioning and then reviewing the results of a trade mark clearance search, to assess whether there are any pre-existing third party trade marks in existence which would prevent the use of the proposed new brand, due to there being a likelihood of confusion.
A recent case highlights just how difficult it can be to assess whether or not there is a likelihood of confusion.

What was the case about?

In summary, the claimant sells women's clothing, primarily activewear, under the brand ATHLETA. It also owns, among other things, registered UK trade marks for the word mark ATHLETA and for the following 'ATHLETA Combination Mark':

The defendants distribute clothing under the brands ATHLECIA and the following 'ATHLECIA Combination Mark':

The claimant asserted, among other things, that the defendants use of its marks constituted registered trade mark infringement of the claimant’s marks, due to their being a likelihood of confusion on the part of the relevant public.

What does the law say?

Whether there is a likelihood of confusion comprises a multifactorial assessment, involving the weighing of several factors against each other, whose relative weight is not laid down by law but is a matter of judgment for the court or tribunal on the particular facts of each case.
 
Caselaw has made clear that the legal test 'likely to cause confusion amongst the average consumer' is inherently imprecise. The test involves a prediction as to how the public might react to the presence of two trade marks in ordinary use in trade. As Mr Iain Purvis QC, sitting as an appointed person, said: “Any wise person who has practised in this field will have come to recognize that it is often very difficult to make such a prediction with confidence.”

What did the court decide?

All of the above factors point towards there being a likelihood of confusion. Yet, despite this, the court held that there is no likelihood of confusion between the word marks ATHLETA and ATHLECIA when used in relation to identical goods, namely clothing. This was because the court held that the distinctiveness of the two marks was weak.

Caselaw has established that the issue of a trade mark's distinctiveness is tied to the scope of the protection to which it is entitled. Trade marks with a less distinctive character enjoy narrower protection than trade marks with a highly distinctive character, whether inherently or acquired through use. If the only similarity between the trade marks in issue is a common element which has low distinctiveness, that points against there being a likelihood of confusion.

In this case, the court held that:

• ATHLETA and ATHLECIA are based on the words 'athlete' or 'athletic/s' and are being used in relation to clothes aimed at female athletes.
• The common element between the two word marks is ATHLE. The reasonably circumspect consumer of clothing would consider that to be a reference to ‘athlete’ or ‘athletic/s’. The average consumer will therefore pay close attention to the suffixes of the two marks, and presumably would notice the differences.
• A registration for a trade mark which includes a descriptive element does not allow its proprietor to prevent third parties using the descriptive element, or trade marks based on the descriptive element, so long as the signs they use can be distinguished.
• The position may differ where a trade mark has acquired enhanced distinctiveness through use - but that was not the case here.

Furthermore, there was no evidence of actual confusion arising amongst UK consumers because of the similarity of the two brand names, albeit the judge commented that the use of the mark ATHLETA in the UK hadn’t been on a sufficient scale from which any actual confusion was likely to become apparent. Therefore, the judge didn’t consider the point to be detrimental to the claimant’s case.
 
The court reached a different conclusion in relation to the ATHLETA Combination Mark when compared to the ATHLECIA Combination Mark:

The court held that the roundels made a difference to the overall assessment, with them being sufficiently similar, particularly taking into account imperfect recollection, to increase the likelihood of confusion where the goods are identical, i.e. clothing.

Lessons to be learned

The case highlights how difficult it can be to assess whether there is a likelihood of confusion between two marks. Although the legal tests are objective, ultimately they are subjectively assessed.

The writer would not be surprised if another court or tribunal concluded there was a likelihood of confusion between the word marks ATHLETA and ATHLECIA, when both are used in connection with activewear.

When looking to clear the mark ATHLECIA for use, had the word mark ATHLETA been revealed in the results of a trade mark clearance search the writer would have cautioned against using the mark ATHLECIA, for fear of a court holding there would be a likelihood of confusion with the mark ATHLETA. 

The outcome of the case can be contrasted with another, recently heard in the Court of Appeal. In that case the two marks in issue were VETSURE and PETSURE, both used as brand names for pet insurance. At first instance the judge held there was no likelihood of confusion. The Court of Appeal disagreed, in particular because it found there was evidence of actual confusion arising amongst UK consumers because of the similarity of the two brand names. Self-evidently such evidence would not be available to a brands lawyer who is asked to clear a potential new brand name for use. All they can do is carry out a theoretical assessment on paper. Had such evidence existed in the ATHLETA v ATHLECIA case the court may have decided the case differently.

Both decisions support Mr Iain Purvis QC’s statement: “Any wise person who has practised in this field will have come to recognize that it is often very difficult to make…a prediction [as to whether there is a likelihood of confusion between  two trade marks in ordinary use in trade] with confidence.”

For more information please contact Carl Steele.