YouView TV Ltd’s CTM application for the sign YouView+ in Classes 9, 16, 38, 41 and 42 was opposed by a company called You-View.tv on the basis of likelihood of confusion with the latter’s Benelux trade mark You View (figurative) protected for services in Classes 35, 38 and 41.
The opposition was rejected in its entirety due to a technicality, namely, the fact that the opposition was filed in the name of ‘You-View.tv’ but the Benelux trade mark upon which the opponent sought to rely stood in the name of ‘You-View.tv BVBA’. You-View.tv appealed to the Board of Appeal, filing evidence that established its ownership of the earlier mark. The Appeal was rejected, the Board stating that it had no discretion to take into account the evidence of ownership because it had been filed late. However, You-View.tv successfully appealed to the General Court to have the Board of Appeal’s ruling set aside. The General Court stated that the Board should have used its discretion to allow the evidence into the proceedings. The Board had erred by not examining (1) the circumstances warranting the late production of the evidence and (2) the probative value of the evidence. Whilst the Office may disregard facts or evidence filed out of time, it is not compelled to do so.
The outcome of this case is a victory for common sense. One of the purposes of trade mark law is to prevent consumer confusion from arising. Had the Board of Appeal’s original decision been allowed to stand, two marks consisting primarily of the words YOU VIEW and owned by unrelated entities would both have been registered and potentially used in the Benelux countries; a situation that would surely have resulted in commercial confusion to the detriment of consumers and the holder of the earlier trade mark right. Nevertheless, there is a lesson to be learned: opponents in trade mark opposition cases should ensure that the earlier marks on which they rely are in the correct name or that adequate explanation for any discrepancy is provided in a timely manner.
David Yeomans, Trade Mark Assistant