The High Court has upheld several decisions of UK IPO Hearing Officers in trade mark opposition and invalidity cases - for example, see here and here. As readers will note, it is rare that a Hearing Officer decision is overturned on appeal.
However... in a recent case concerning a trade mark application for STITCH, the judge allowed the appeal and remitted the case back to a Hearing Officer for a fresh determination (Stitch Editing Ltd v TikTok Information Technologies UK Ltd).
The trade mark application was filed by Stitch Editing, for these services in class 41:
“Editing of music, television programs, films, commercials, internet videos, and video programs; music, film and video production; providing advice and information for music, video and film concept and script development; multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films; post-production editing services in the field of music, videos and film; production of visual effects for videos, commercials, dvds, pre-recorded optical discs featuring music, television programs, films, commercials, internet videos, and video programs; television production for internet web sites; video editing; videography services.”
TikTok opposed the application, based on Section 3(1)(b), (c) and (d) of the Trade Marks Act. Stitch Editing contested the opposition, and also relied on acquired distinctiveness. The Hearing Officer found against the applicant on all the issues.
A flawed decision
The judge, Sir Anthony Mann, found several problems with Hearing Officer’s determination. He said:
“She made a clear finding, which is in essence not seriously challenged in this appeal, that the word ‘Stitch’ is apt to describe the joining of media in all sorts of contexts, including audio and video production, but it is not clear how she applied this in relation to each of the services described in the specification. … What she does not explicitly say is that because STITCH had the meaning attributed to it, the average consumer (in the trade) would take it to describe the activities in each of the listed services in the specification.”
Because the Hearing Officer had not considered whether the mark applied for was descriptive of each of the services in the specification, the judge said her decision was flawed: “It is not clear how she jumped from her conclusion as to the potential meanings of STITCH to her conclusion as to descriptiveness in relation to all the services.”
This finding in relation to Section 3(1)(c) was also true in respect of Section 3(1(b) and 3(1)(d).
Acquired distinctiveness
Sir Anthony also found that the approach to assessing acquired distinctiveness was flawed because the evidence (which included emails, stationery, other logo use, brand engagement and awards) was not considered correctly. The Hearing Officer had listed the evidence without discussing its relevance or significance, and she did not weigh up all the factors. The judge concluded:
“I am aware that a judgment is not impeachable just because it does not expressly articulate each and every little step towards a conclusion, and overall assessments are permitted without specifying all their ingredients, but the way this Decision is expressed leads to the conclusion that the omission to consider the way in which the evidence was put is or might well be because the point was not fully considered. That makes the Decision impeachable on an appeal.”
What does this mean?
The judgment shows a Hearing Officer’s decision can be overturned if a judge is satisfied that the decision is flawed. This will be the case where all the relevant facts and circumstances have not been properly considered.
The UK IPO will now have to make a further determination in the case, bearing in mind the Court’s guidance.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com