The Applicant in this case (Case No: O/550/171), ABC DETERJAN SANAYI VE TICARET ANONIM SIRKETI, filed an application for its ABC device in Classes 03 & 05. The Application claimed the colours red, blue, yellow and white. The Opponent, The Procter & Gamble Company, filed a notice of opposition under Sections 5(2)(b) and 5(3) and relied on its EUTM Registrations for its monochrome Atomium mark in Class 03 and its coloured ARIEL ACTILIFT mark in Class 03 (subject to proof of use).
Proof of Use
The test set out in The London Taxi Corporation Limited v Frazer- Nash Research Limited & Ecotive Limited,  EWHC 52 and, following established case law, the test to establish use in a substantial part of the EU was also applied to find that the Opponent had made genuine use of the ARIEL ACTILIFT mark in the EU during the relevant period in relation to laundry related products.
Whilst the Class 05 goods covered by the Application were not found to be similar/identical to the goods covered by the earlier rights, the goods in Class 03 were found to be similar/identical to the earlier rights except for ‘deodorants for animals’.
The marks as wholes were compared. Whilst the Opponent’s Atomium mark was registered in monochrome such that normal and fair use could be in any colour, the UKIPO questioned how far one can go in attributing a distinctive colour scheme of the Application to the earlier mark. The UKIPO found that the Application involved a complex contrasting colour scheme and with considering the decision of Specsavers International Healthcare Ltd & Others v Asda Stores Ltd  EWCA Civ 24 the UKIPO did not consider that the Atomium mark should be compared as though it was in the same colours as the Application. As such, the UKIPO considered the Atomium mark was capable of being used in any single colour but not in colour combinations.
Visually, it was held that the Application was similar to a very low degree to the Atomium mark and that there was a moderate degree of visual similarity between the Application and the ARIEL ACTILIFT mark. Aurally, there was no similarity between the Atomium mark and the Application and the Application was aurally different to the ARIEL ACTILIFT mark. Insofar as the devices are concerned, the marks are conceptually neutral and the word elements of the marks do not convey any concept. Further, it was found that, the ARIEL ACTILIFT mark had obtained enhanced distinctiveness in relation to laundry products. The fact that the Atomium mark had acquired enhanced distinctiveness did not help the Opponent as this was only for the mark in the colour green whereas the Application appears in a combination of colours.
Whilst the Application may call to mind the Opponent’s marks, it is unlikely that the public will believe that the Application is a brand extension of the earlier marks such that it was held that there is no likelihood of direct or indirect confusion between the marks and the opposition failed against all goods under Section 5(2)(b)
The UKIPO found that both of the earlier marks have a reputation for laundry products and that a link will be made between the Application and the earlier marks in relation to laundry products but not for the remaining products. Section 5(3) therefore succeeded in part. It is worth noting that ‘soaps’ covered by the Application was not found similar to the laundry and cleaning products covered by the ARIEL ACTILIFT mark.
It is important to remember that monochrome marks will not necessarily afford rights to colour combinations.
Eleni Mezulanik 23 March 2018
1Case No: O/550/17, UKIPO Decision- In the matter of the request for protection in the UK of IR No. 1291862 designating protection in the UK for the ABC device in Classes 03 & 05 in the name of ABC DETERJAN SANAYI VE TICARET ANONIM SIRKETI and Opposition thereto under No. 407649 by The Procter & Gamble Company, 31 October 2017