MISTER CHEF v MASTERCHEF: Where is the line for conceptual similarity?
The English High Court has upheld a Hearing Officer’s decision that MISTER CHEF is not conceptually similar to MASTERCHEF, rejecting an appeal brought by Shine TV.
The case concerned an application to register a trade mark for MISTER CHEF for goods in class 21. Shine opposed the application based on its UK and EU trade marks for MASTER CHEF and MASTERCHEF.
In his decision, the Hearing Officer found that the goods were identical and the average consumer was likely to be either a professional cook/restaurant business or a member of the public with an interest in cooking paying a normal degree of attention. He found that the marks were visually and aurally similar to quite a high degree, but conceptually dissimilar. There was therefore no likelihood of confusion, and the opposition failed.
Explaining his finding of conceptual dissimilarity, the Hearing Officer said:
“The combination [of MISTER and CHEF] conveys the meaning of a person or chef called Mister Chef. By contrast, the word MASTER in MASTERCHEF/MASTER CHEF will be understood by relevant average consumers as meaning ‘a skilled practitioner of a particular art or activity’.”
In its appeal, Shine argued that the Hearing Officer should have considered other meanings of the term MASTERCHEF. In particular, it said that the average consumer would perceive Master as a title used by a boy not old enough to be called “Mr”. Such an interpretation would lead to a finding of conceptual similarity.
However, Mrs Justice Joanna Smith DBE rejected this argument, saying:
“The Hearing Officer correctly appreciated that the marks were to be ‘compared as wholes’ and it was open to him to conclude, as he did, that the average consumer … would have the ‘third meaning’ of MASTER in mind when that word was used in conjunction with the word CHEF. The corollary of that finding is that the average consumer would not perceive any other likely meaning. There is no basis, in my judgment to interfere with that conclusion.”
She added that it was “plainly open” to the Hearing Officer to conclude that the average consumer would not have understood MASTER to refer to a boy not old enough to be called “Mr”.
The judge also rejected the argument that the Hearing Officer consciously or unconsciously assumed that MASTERCHEF meant “a top chef” due to the reputation of the MasterChef TV show. She said there was nothing in his reasoning to suggest that he had taken the reputation of the show into account in carrying out his assessment of conceptual dissimilarity.
Get it right first time
This case shows once again how important it is to present arguments and evidence fully at the UK IPO. As the judge pointed out, appeals of Hearing Officer decisions are reviews and not re-hearings. Judges should be reluctant to interfere with findings, and the Hearing Officer is not obliged to spell out their reasoning in full.
Unless there is a clear mistake, therefore, it is very hard to overturn a Hearing Officer decision on appeal.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - email@example.com