The High Court has upheld a decision to cancel a UK registration for the trade mark TIK TOK owned by an IT consultancy business, based on earlier rights held by the well-known online video hosting platform, TikTok (Tik Tok International Limited v TikTok Information Technologies UK Limited).The appellant (Tik Tok International Limited) had applied to register TIK TOK at the UKIPO for "the compilation of information relating to information technology" in Class 42. The respondent, (TikTok Information Technologies UK Limited) filed an application for cancellation of the IT consultancy's mark on the basis of a likelihood of confusion with its earlier registered rights in the UK, which claimed an earlier priority date from an Indian trade mark, and covered goods and services in Classes 9, 38 and 41.
The hearing officer for the Registrar of Trade Marks found that:
- the earlier mark was inherently distinctive to a high degree;
- the goods and services in question were similar to at least a low degree;
- the average consumer would pay at least a medium degree of attention during the act of purchasing; and
- there was a likelihood of direct confusion.
The appellant accepted that the marks were identical but submitted that the hearing officer's decision had not been founded on the evidence and that she had erred in her findings regarding the distinctiveness of the mark TIK TOK, the similarity between the goods and services and the likelihood of confusion.
The High Court held that an appeal would only be allowed if the hearing officer's decision was wrong and said it would be reluctant to interfere unless there had been an error of principle. Dismissing the appeal, the court held that the decision by the hearing officer was sound and she was entitled to draw the conclusions she had reached.
On lack of evidence, the court found that the key issues relating to similarity and likelihood of confusion had to be determined by reference to the notional average consumer and the court was well placed to undertake this exercise, in many cases without the need for evidence. Furthermore, the point on lack of evidence should have been raised at first instance.
The appellant's challenge to the findings on distinctiveness of the mark was a new point on appeal. The court said that caution is required in deciding whether to allow a new point but allowed this in the circumstances since it would not have necessitated new evidence, it would not have affected the way the case was run and the respondent had had adequate time to deal with it. It noted that the mark TIK TOK was evocative of the sound of a clock, the deliberate misspelling had given it the element of distinctiveness, and it followed that the term was invented. It was not descriptive of the respondent's goods and services. Therefore, the court found that common sense tells you that the mark TIK TOK is inherently distinctive for the goods and services registered, and highly so. Consequently, the hearing officer was entitled to reach the same conclusion.
With regard to the question of similarity between the goods and services at issue, the court found that it is well-established that goods can be similar to services so application software (Class 9) could be used for the compilation of information (Class 42). The question of similarity between compilation of information (Class 42) and providing access to search services (Class 38) was more difficult but the court was not persuaded in the hearing officer's decision, that there was similarity to at least a low degree, was wrong. In any event, it was not necessary to her decision to find similarity between these services. As regards similarity of the services applied for with the respondent's services of electronic publication of information (Class 41), the court held that the hearing officer had been entitled to conclude that there may be some overlap of users and there was overall a low degree of complementarity on the basis that consumers may think the same undertaking would be responsible for both gathering and publishing information on a particular topic.
Finally, the hearing officer's findings on likelihood of confusion were correct, given the distinctiveness of the mark, and with the identity between the parties' marks being significant in offsetting any low degree of similarity between the goods and services.
The court's decision acknowledges a significant degree of respect is shown to a hearing officer's specialised experience, with its evaluation of the issues leading to the decision that the hearing officer was entitled to come to conclusions reached, based on the application of established principles in law.
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