Case law: Two potential different groups of 'average consumer' when assessing likelihood of confusion between trade marks
Businesses thinking of applying to register a trade mark should take into account that if another trade mark owner opposes the application on grounds the average consumer is likely to confuse the two marks, there may be more than one group of average consumers, each with a different perception of the marks, following a recent ruling.
This update was published in Legal Alert - June 2017
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A major retailer applied to register the UK trademark SOULUXE (in a stylised form) in various classes of goods and services. Another company opposed the application on grounds there was a likelihood of confusion with a number of its own UK and European trade marks, which all included the word SOUL. Sometimes the word was used on its own, and sometimes as part of a composite or longer word. In some cases, a flower image was used instead of the 'O'.
The law says that the likelihood of confusion must be assessed (among other things) by reference to whether the 'average consumer' would confuse the two marks.
The Intellectual Property Office (IPO) Hearing Officer ruled that there was no likelihood of confusion. His reasoning included identifying two different groups of average consumer, based on their perception of the trade mark applied for, and assessing the likelihood of confusion among each.
The company opposing the application argued that there could only be one group of average consumers, so assessing the likelihood of confusion by reference to two groups meant he had not applied the test properly.
The High Court disagreed. It said the Hearing Officer was justified in deciding there were two groups of average consumer with differing perceptions of the trade mark applied for when assessing the likelihood of confusion.
- Businesses thinking of applying to register a trade mark should take into account that if another trade mark owner opposes the application on grounds the average consumer is likely to confuse the two marks, they should take into account that there may be more than one group of average consumers, each of which has a different perception of the marks
Case ref: Soulcycle Inc v Matalan Ltd  EWHC 496
Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.