How does the High Court treat appeals from the UK IPO?
A recent High Court judgement concerning the TIK TOK trade mark shows the difficulty of overturning decisions of a UK IPO Hearing Officer (Tik Tok International Ltd v Tiktok Information Technologies UK Ltd).
TIK TOK v TIK TOK
Tik Tok International, an IT consultancy, had registered TIK TOK in April 2018 for “compilation of information relating to information technology” in class 42.
TikTok Information Technologies UK, which operates the well-known social media platform, sought to invalidate the mark based on its earlier registration for TIK TOK (the Earlier Mark).
The Earlier Mark was filed as an EUTM, added to the EU register on 29 November 2018 and cloned to a UK mark on 31 December 2020. It claimed a priority date of 23 October 2017, based on an Indian trade mark, and was registered for goods and services in classes 9, 38 and 41.
The Hearing Officer had found that the Earlier Mark was inherently distinctive to a high degree, the goods and services were similar to at least a low degree, the average consumer would pay at least a minimum degree of attention, and there was a likelihood of direct confusion.
In her concise judgment, Mrs Justice Falk found that the Hearing Officer was entitled to reach these conclusions. She rejected the argument that TIK TOK was the sound of a metronome or clock and hence descriptive of the relevant goods/services. She summed up:
“In my view, TikTok, spelt in the way it is in the Earlier Mark, is clearly highly distinctive, and further, and in particular, the identity between the Earlier Mark and the Mark is also very significant in offsetting any low degree of similarity. Therefore, the conclusion that there was a likelihood of confusion was not wrong; indeed, it was the correct conclusion.”
She also addressed Tik Tok International’s argument that some of the Hearing Officer’s findings were not founded on evidence, pointing out that it is well established that issues of similarity and likelihood of confusion are determined by reference the notional average consumer: “The court is well placed to undertake that exercise, and one has to ask what, in many cases, evidence could realistically add to that.”
Moreover, any complaint about evidence should have been raised at first instance, rather than on appeal.
Don't cut corners
The judgment is a reminder that the High Court is often reluctant to overturn Hearing Officer decisions. Trade mark proceedings at the UK IPO should be taken seriously, with full arguments and evidence where appropriate. If you get a decision you don’t like, it can be hard to overturn it later!
Where to appeal
When appealing a UK IPO decision, there are two options: an appeal to an Appointed Person (which keeps the issue within the UK IPO itself and is usually more cost effective and guarantees and expert will hear the appeal or an appeal to the High Court where there is no guarantee that the appeal will be heard by a judge with trade mark experience.
Unlike an appeal to an Appointed Person, the advantage of a High Court appeal is that there is another line of appeal to the Court of Appeal. Whether that court will grant leave to appeal is another question.