The increasing use of apps to sell goods and services, frequently means that what the public use to identify and/or recall a specific supplier, is their logo. This is all the more so, if the purveyor of the goods/services has chosen descriptive words to tell the public ‘it does what is says on the tin’ (with apologies to the owners of the RONSEAL trade mark).

There has already been a salutary warning about the use of descriptive terms (‘Free Prints’), used in relation to an app comprising a logo and the words ‘Free Prints’ in a case in 2020 (Planetart LLC and anor v Photobox Limited and anor [2020] EWHC 713 (Ch)). In that case, Photobox were found to infringe Planetart’s device trade marks, but the action failed in relation to passing off, in large measure, because of the use of ‘Photobox’, which distinguished the device marks when combined with the words ‘Free Prints’.

In the case of Wineapp Ltd v Johnson [2022] EWHC 620 (Ch), the use of different logos with the words ‘Winesapp’ and ‘Wineapp’ fell to be considered. Would the logos be sufficient to do so?

The relevant period in which the Opponent had traded was 10 months. During that time, it had sold over 30,000 bottles of wine (totalling £165,000), and had invested over £100,000 in marketing activities. It provided evidence of those campaigns, but adduced no customer evidence relating to whether the relevant public would be confused or deceived by the Applicant’s mark. The Applicant put in a brief statement putting in context that in November 2018 the UK wine market was valued at £10.6 billion, when the Opponent launched its business.

At the hearing in the UKIPO, the Hearing Officer considered the specific cases of Reckitt & Colman v Borden ([1990] UKHL 12) and Office Cleaning Services Limited v Westminster Window & General Cleaners Limited [1946] 63 RPC 69, and the criteria laid out in paragraph 309 of Halsbury’s Laws of England Volume 97A (2012 Reissue). She concluded that there was a small, but not insignificant goodwill in the Opponent’s mark, but as the descriptive terms used were virtually identical, the relevant public would rely on the logos to distinguish the two businesses. Accordingly, she considered there was no misrepresentation leading to deception and confusion.

The Opponent appealed to the High Court.

Mr Justice Edwin Johnson, first noted the case of Re REEF Trade Mark [2002] EWCA Civ 763, as to the approach an appellate court must take in an appeal from a hearing officer. The judge’s attention was also drawn to Litecoin Foundation Ltd v Inshallah Ltd [2021] EWHC 1998 (Ch), which provided additional guidance of principles applicable to appeals regarding findings of fact or evaluation of factual evidence. However, the key point made by the judge (at paragraph 30) was that he should show ‘a real reluctance’ to interfere with the Hearing Officer’s evaluation of the facts absent a distinct and material error.

In considering the various grounds for appeal, the judge paid close attention to paragraph 26 of the Hearing Officer’s decision, in which she considered the verbal elements (ie the word part of the marks) were ‘virtually identical’ and that the distinctiveness derived from the device part of the two marks. These she described respectively, as ‘…a letter W or the silhouette of two wine glasses….and a single filled wine glass…’.

Significantly, the judge considered the Hearing Officer had directed herself correctly in applying the authority of Office Cleaning. In that decision, it was held that comparatively small differences in words (in that case ‘Association’ and ‘Services’) would be sufficient to avert confusion where a trade name consists wholly or partly of descriptive words, apt to describe the articles sold or services rendered. In the Wineapp case, the Hearing Officer had non-verbal elements to aid distinction, not just another word. Moreover, as also considered in the Office Cleaning decision, the words ‘wineapp’ had not achieved a secondary meaning; an admission Counsel for the Opponent was forced to make.

Finally, the Opponent’s Counsel had raised the approach taken by EU courts for trade mark infringement/oppositions, had relevance also to English passing off cases. The judge did not feel the need to decide the point, given he upheld the Hearing Officer’s approach.

There are two clear messages that come out of this case. First, if part or all of your trade mark/name consists of descriptive words, which aptly describe your goods/services, you will have considerable difficulty enforcing your mark. This is true whether it is registered or unregistered. Slight differences, particularly visual ones like a logo will be sufficient to avoid there being confusion, or it being regarded as a misrepresentation.

Secondly, you are only as good as your witness/expert evidence. In this case, as the Opponent had the burden of establishing a misrepresentation leading to deception and confusion (or at least a likelihood of that), simply not putting in any consumer evidence was inevitably going to prove fatal in a fight between descriptive marks. Not seeking to put in the best evidence before the initial tribunal is never going to make the case an easy one to argue or decide. Where there is no consumer evidence the tribunal has to decide for itself what the relevant public (or average consumer in trade marks) would conclude to be the case for misrepresentation/deception or confusion.

It is a false economy to skimp on the evidence at any tribunal hearing a trade mark/passing off case, and no amount of mud throwing at the Hearing Officer’s decision is ever going to make up for the paucity of evidence.