Trade marks - allegation that mark likely to cause confusion - judge erred in failing to consider sequential comparison of marks and normal imperfect recollection of public [Trade Marks Act 1938 s.11]

PSG, a supplier of outer clothing, footwear and headgear, had used the trade mark OPENAIR since 1985. In 1993, NRS registered the mark OPEN COUNTRY in respect of similar clothing. PGS opposed the registration of the mark, arguing that it was likely to cause confusion with its own mark, contrary to the Trade Marks Act 1938 s. 11. Directing himself that he had to make a straightforward comparison between the two marks , the hearing officer found that the presence of the word COUNTRY gave NRS's mark a strong identity of its own, making it unlikely that the mark would be confused with PSG's mark. PSG appealed. The judge, dismissing the appeal, held that the hearing officer has approached the issue of confusion reasonably. PSG appealed, arguing that it had not been appropriate to consider the two marks side by side. The hearing officer, PSG submitted, should have compared the two marks by considering the way a customer would react to them, and furthermore it would be proper to rely on NRS's actual use of its mark as illustrative of its normal and fair use. In opposing the appeal, NRS contended that its mark was not likely to cause confusion because 1) there was a clear difference in idea between the two marks, one being of the outdoors and the other being of the countryside, and 2) the marks appeared on different coloured labels  and had clear phonetic differences. 

Held, allowed the appeal (Mantell LJ dissenting), that the judge had been wrong to conclude that the hearing officer had adopted a reasonable approach to the case. The hearing officer had merely made a side by side comparison of the two marks and had failed to consider customers' likely reaction to the marks. Customers did not normally consider marks simultaneously or with perfect recollection. Rysta's Application (Asistoc) [1943] 60 RPC 87 followed. The hearing officer had failed to apply the standard of proof set out in Berlei (UK) Ltd. v. Bali Brassiere Co Inc [1969] 1 WLR 1306 required for the purpose of s.11. In the circumstances, it was appropriate to consider the issue afresh. In the instant case, NRS's use of its mark could be used to compare the two marks. Apart from the first two syllables which were common to both marks, the marks differed both phonetically and visually. Although there was a relationship between the idea of the marks , the overall idea was not identical. Whereas OPEN COUNTRY suggested clothing which was suitable for wearing both outdoors and in the countryside, OPENAIR merely suggested clothing which was suitable for wearing outdoors. The marks were not likely to be confused when compared side by side. Members of the public, however, were likely to be confused if they saw clothing with NRS's mark after they had seen similar clothing using PSG's mark. The first two syllables of the marks and the similarity between the idea of the marks was sufficient to cause confusion in members of the public possessing normal imperfect recollection.

Open Country Trade Mark, Trans. Ref: 98/0581, November 24, 1999. Aldous LJ Court of Appeal.

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