1. 42
itma.org.uk July/August 2014
O/119/14 (invalidity) and O/119/14 (opposition),
Red Z, UK IPO, 13 March 2014
T
his case concerned an appeal
against UK IPO decision
(O/070/12) in respect of
the consolidated opposition and
invalidation proceedings brought by
Red Bull GmbH (“Red Bull”) against
Stute Nahrungsmittelwerke GmbH
(“Stute”) in respect of their “Red Z”
(figurative) trade marks (examples
shown below) that covered goods
in class 32.
The Hearing Officer (“HO”) had
found in favour of Red Bull in respect
of both matters, allowing both actions
on the grounds of similarity with Red
Bull’s earlier word mark “RED-X” (UK
Trade Mark Registration 2238189).
Stute appealed on the grounds that
(inter alia) the HO had failed to give
any, or adequate, weight to the absence
of evidence of confusion between the
marks in making his assessment of the
likelihood of confusion. In essence, its
appeal called for a finding that Red
Bull’s objections should yield to the
reality of “peaceful coexistence”.
Appeal findings
The Appointed Person (“AP”)
determined that it is clear from
decided case law that:
• it is for the person relying upon an
alleged coexistence of trade marks to
prove that the consumers targeted are
accustomed to seeing those marks
without confusing them;
• absence of evidence of actual
confusion is rarely significant,
especially in a trade mark case where it
may be due to differences extraneous
to the plaintiff’s registered trade mark;
• the provisions in the legislation
relating to infringement are not simply
reflective of what is happening in the
marketplace, rather they must also
Peace out
An absence of evidence of confusion
doesn’t prove peaceful coexistence,
says Carrie Bradley
Carrie Bradley
is a Senior Trade Mark Attorney and Head of Trade Marks
and Designs at LOVEN IP carrie.bradley@loven.co.uk
Carrie advises on IP protection, enforcement and dispute
resolution. She specialises in contentious trade mark, design
and copyright matters, and advises on pre-litigation issues.
consider notional use of the registered
trade mark extended to the full
possible width of the classification
of goods and services; and
• when considering the weight to
be attached to the absence of any
evidence of actual confusion, it is
relevant to consider what opportunity
there has been for confusion to occur
and to be detected.
With the burden of proof clearly
resting on Stute’s evidence of
coexistence, the AP concluded that
what had been put before the HO had
been “too flimsy” and insufficient
to establish evidence of peaceful
coexistence such that it may counter
his prima facie finding of a likelihood
of confusion. As the HO had
originally noted, the concurrent use
of the respective marks had been
relatively limited (both in terms of
the period of time and the extent
of use). As such, it was found that
the capacity for confusion had
not been adequately tested.
This case demonstrates that
establishing a successful argument
of peaceful coexistence carries a
significant burden of proof upon
the party who seeks to rely upon
it. The simple absence of evidence
of confusion will not assist in and
by itself, and the evidence of peaceful
concurrent use adduced cannot
be negligible. On the contrary, it
would appear that such evidence
would need to demonstrate a
considerable duration and extent
of side-by-side use to adequately
test and overrule any notional
risk of confusion.
It also reminds practitioners
that, to bring a successful appeal,
one must satisfy the AP that there
has been an error of principle
or a distinct and material
error in the HO’s decision.
Appeals are not intended to
offer a full re-hearing of a
case, hence there must be
a serious basis for an AP to
interfere with the HO’s
finding on appeal.
Establishing
a successful
argument
of peaceful
coexistence
carries a
significant
burden of proof
upon the party
who seeks to
rely upon it