A name is not reason for confusion

In a decision of the UKIPO (O/219/18, HARRY GORDON’S BAR and HARRY GORDONS (Opposition), 5th April 2018), the IPO found in favour of retailer Selfridges, allowing the registration of its trade mark applications for HARRY GORDON’S BAR and HARRY GORDONS.

In May 2013, Selfridges applied for the above trade marks covering classes 29, 30, 32, 33 and 43 for goods including alcohol and services for providing drinks.

In August 2013, Harry’s New York Bar filed a notice of opposition against all of the goods and services in both applications. The Opponent argued that the use of the name HARRY in Selfridges’ trade marks resulted in similarities with its earlier marks HARRY’S, HARRY’S BAR and HARRY’S NEW YORK BAR, which it claims were first used in Paris in 1911.

The Opponent submitted that its bars can be found in luxury hotels that would be visited by the same sort of people who frequent Selfridges’ store on London’s Oxford Street. Therefore, use of the mark in such a prestigious establishment would “ride on the coat tails” of its existing reputation.

Selfridges rejected these claims, stating that its bar was named after the retailer’s founder, Harry Gordon Selfridge, and inspired by the popular TV series, Mr Selfridge, about his life.

Comparison of marks

The IPO said that, as all the marks at issue began with the name HARRY, there was an inevitable degree of visual and aural similarity – however, only to a medium degree for HARRY GORDONS and to a slightly higher than medium degree for HARRY GORDON’S BAR.

The conceptual similarity was found to be low because the Opponent’s HARRY’S BAR trade mark indicates that the bar is owned or operated by somebody called Harry, giving no reference to a surname. Meanwhile, Selfridges’ trade marks refer to a specific individual, namely a HARRY whose surname is GORDON, or the particular individual Harry Gordon Selfridge.

Likelihood of confusion

The IPO stated that consumers are used to distinguishing between names and using them to identify particular undertakings, because it is not uncommon for bars and restaurants to use personal names for their businesses. Therefore, HARRY GORDONS or HARRY GORDON’S BAR would not be perceived as a reconfiguration of HARRY’S BAR. Consequently, the s5(2)(b) claim failed.

Reputation

The Opponent’s evidence supported use and reputation in the sign HARRY’S NEW YORK BAR, but not HARRY’S BAR, because the differences between the marks were considered sufficient to avoid the public making the necessary link. Even if the Opponent had a reputation for HARRY’S BAR in the EU, its Paris location meant it had not been brought to the attention of a commercially significant part of the UK public. Therefore, the ss5(3) and 5(4)(a) claims failed.

The opposition failed in respect of all of the grounds pleaded by the Opponent, and it was ordered to pay Selfridges £2,200.

Although there is nothing objectionable about businesses using personal names per se, small differences and conceptual variations between name marks can often be sufficient to avoid the risk of likelihood of confusion.

Key points:

• While names are, in most cases, perfectly acceptable as trade marks, they often do not result in the most distinctive of marks
• Small differences and conceptual variations between similar name marks can be sufficient to rule out overall similarity

Amelia Skelding 22 May 2019