Trade Mark Application No. 2655215

The following article is a review of case O/135/15 at the UKIPO.

Background

Keystone IEA Limited (the Opponent) opposed Keystone Wealth Management Limited’s (the Applicant) Trade Mark Application No. 2655215 for “mortgage & protection advice, financial services” in Class 36 on the basis of Section 5(2)(b) of the Trade Marks Act 1994 (similar to an earlier mark for identical/similar services, resulting in a likelihood of confusion). The Opponent relied upon its Trade Mark Registration No. 2641172 covering “estate agents” in Class 36.

The Applicant responded stating that the services were sufficiently distinguishable, meaning there was no likelihood of confusion.

No further submissions were filed and a decision was made on the papers.

Trade Mark Registration No. 2641172

Opposition Decision

The Hearing Officer held^[1]:

• average consumer attention would at least be reasonable.
• services were highly similar.
  • it was not uncommon for an estate agent to arrange a mortgage on behalf of a buyer and, or to offer advice in respect of related life and buildings insurances.
  • “financial services” is a wide term, resulting in a degree of similarity with estate agency services.
• KEYSTONE was dominant such that the marks were highly similar.
  • the additional elements “WEALTH MANAGEMENT” and “INDEPENDENT ESTATE AGENTS” were non-distinctive and descriptive.

Accordingly, the Opposition was successful in respect of “mortgage and protection advice”.

As there are a number of financial services unrelated to estate agency services, eg., banking, pensions, where the degree of similarity would be low or non-existent, the Hearing Officer allowed 14 days to provide a revised specification for “financial services”.

As a response was not received and the opposition succeeded in its entirety^[2].

Appeal

The Applicant appealed on 7 October 2014 on the grounds that:

1. The Opponent was not approved to, and did not, provide financial services. A separate sister company, Keystone IMC Ltd, provided mortgage and protection advice, but had not registered a trade mark and was not party to the opposition.

2. The Applicant had been authorised to provide financial services since 1 June 2010. Keystone IMC Ltd was only authorised to provide a limited range of financial services as from 3 August 2012.

3. It was uncommon for estate agents to provide (or to be authorised to provide) financial services themselves.

4. Although financial services was a broad term, and mortgages by their nature were related to property, it did not follow that an estate agency should have trade mark protection for mortgage advice provided by another company owned by that estate agency.

5. Confusion was unlikely as the Applicant was based in Kingston, Surrey and the Opponent in Ipswich, Suffolk.

6. There were over 300 active companies with the name “Keystone”, such that it could not be claimed by a single undertaking.

The appeal also requested that the specification be amended to “pensions, investments, mortgage and protection advice (excluding estate agency)”. This amendment was rejected by the Opponent.

The Applicant also claimed that it did not file an amended specification in time as it did not receive the Hearing Officer’s interim decision until 5 September 2014.

Appeal Hearing

The appeal took place on 25 February 2015 and the Applicant was represented by its Managing Director. The Opponent did not attend, nor did it file written submissions.

With regard to the appeal, this failed because:

1. A registered proprietor can authorise others (eg., a sister company) to use its registered trade mark.

2. The actual uses of the parties are not determinative in an opposition under Section 5(2)(b). What must be compared is notional use of the Applicant’s trade mark in respect of the services applied for versus notional use of the Opponent’s earlier trade mark in respect of the services registered. Also, the scope of protection includes refusal of registration of, not only a later similar trade mark for identical services, but also a later similar trade mark for similar services.

3. A UK Registered Trade Mark is valid and enforceable throughout the UK, such that the fact that the Applicant and the Opponent operated in Surrey and Suffolk respectively was not relevant.

4. The Applicant felt that the Hearing Officer erred in finding that there was a likelihood of confusion because the parties’ services were not the same. However, the question for determination by the Hearing Officer was whether because of the similarities between on the trade marks and the services in concerned, does there exist a likelihood of confusion?

As the Hearing Officer felt that the parties’ services and trade marks were highly similar, in her global assessment, there was a likelihood of direct confusion. The Applicant failed to establish that the Hearing Officer reached this conclusion in error.

To the contrary, in the Appointed Person’s view, the Applicant’s arguments were in fact supportive of her finding of confusion, including association.

Furthermore, the Registrar confirmed that a copy of the interim decision was sent to the Applicant under cover of an explanatory letter dated 16 June 2014 by email, and that this had not been returned to the UK IPO.

Despite the above, the Appointed Person allowed a further week after the Hearing to submit a further revised specification. The Applicant submitted:

“Wealth Management, which includes advice on; Investment Bonds, Unit trusts, Investment Trusts, Venture Capital Trusts, Enterprise Investment Schemes, Personal Pensions, Executive Pensions, Group Personal Pensions, Corporate Pension Planning and Auto Enrolment (specifically regulation, employer duties, implementation and outgoing management)”.

However, this was also rejected as “wealth management” was considered to be a wide term, like “financial services”, such that mortgage and protection advice and other wealth management services related to property, even though not specifically mentioned, would be covered.

Comment

The Applicant was given plenty of opportunities in which to amend its specification to one that would have been accepted by the Registry, but failed to do so. This demonstrates the importance of an accurate and considered specification, particularly when requested by the Registry in order to resolve a dispute.

Charlotte Blakey 4 August 2015

^[1]10 June 2013 (BL O/270/14)

^[2] 31 July 2014 (BL O/337/14)

This article first appeared in the July/August edition of ITMA Review