Mont Adventure Equipment Pty Ltd filed a UK designation of international registration No 1385791 for a mark on 27th November 2017 (see the opposed mark below), with a priority date of 10th November 2017. This designation was opposed by AA Textiles Ltd in respect of class 25, including “technical clothing, footwear and headgear for adventure sport and extreme adventure sport pursuits” under s5(2)(b) of the Trade Marks Act 1994. The Opponent relied on UK trade mark registration No 3191303, filed on 14th October 2016, for Mont Noir in class 25 for inter alia “clothing, headwear, footwear”. The case report can be found here.

The goods involved were acknowledged as identical. For Mont Noir, the average consumer was deemed to be the general public with a reasonable level of attention. However, in light of the specialist technical clothing covered by the Applicant’s specification, the average consumer for the opposed mark was deemed to have a higher than average level of care and attention.

While both marks were held to be averagely distinctive for clothing, for English-speaking consumers aware that the French terms involved mean “mountain” and “black mountain”, the evocative association weakened the distinctiveness of both marks when considered in relation to adventure sports clothing.

Element analysis

The opposed mark

Although the distinctive weight of the opposed mark was held to lie predominantly in the word MONT, the figurative element also made a substantial contribution to the overall distinctive character of the mark. For Mont Noir, as there was no difference in the graphic presentation of the words, the distinctive character of the earlier mark was held to lie in the phrase “Mont Noir” as a whole.

The additional word NOIR in the earlier mark was held to be unlike anything in the contested mark because it doubled the length and number of words. Also, the figurative element of the contested mark had no counterpart in the earlier mark. As a result, there was found to be no more than a medium degree of visual similarity between the two.

It was held that the consumer would pronounce the word MONT in the same way in both marks, so a medium degree of aural similarity was found.

For consumers who understand the meaning of the marks, MONT was held to represent a concept common to both marks, with NOIR as an element of conceptual difference. It was held that MONT would evoke a mountain at large, whereas MONT NOIR suggested the name or description of a specific mountain. Therefore, it was held that the differing concepts behind the marks were readily distinguishable and, overall, the opposition failed.

Nuanced decision

Three factors to note in this case are the nuances related to the average consumer, the assessment of French terms and the identification of distinctive character. Despite the marks covering identical goods, the differentiation of the average consumer for the opposed mark added inconsistencies at an early stage of comparison. When reviewing French terms, the view of consumers who would understand the foreign meaning, and those who would not, should be taken into account. Finally, when considering distinctive character, even relatively minor figurative elements can have a significant impact.

Key Points:

• Despite covering identical goods, the average consumer for the marks at issue was different
• When looking at French terms, the views of consumers both aware and unaware of the translated meanings should be considered
• Even relatively minor figurative elements can have a significant impact on distinctive character

Amelia Skelding 23 October 2019