Case Report: Decision O-184-19: It's a wrap! UK IPO finds no likelihood of confusion between AniWrap and ACTI-WRAP (8 April 2019)

The UK Intellectual Property Office (UK IPO) has held that there is no likelihood of confusion between the marks AniWrap and ACTI-WRAP, despite considering the respective goods to be identical. This decision is notable for the Hearing Officer’s (HO) assessment of the respective goods, which is a reminder that medical goods aimed at different fields may still be considered identical.

 

Background

 

• L&R Medical UK Limited (the opponent) opposed J.A.K Marketing Limited’s (the applicant) application for the word mark ‘AniWrap’ for “bandages [supportive] for veterinary use” in class 10, based on its earlier UK trade mark registration of ACTI-WRAP in class 10 covering “support articles for surgical or medical use; bandages, cohesive bandages, support bandages”. In its opposition, L&R Medical argued that the respective goods were identical or similar and that the marks were visually, phonetically and conceptually similar, resulting in a likelihood of confusion.

 

• In response, J.A.K Marketing denied the opposition claims and requested that L&R Medical provide proof of use of its registration which had been registered for more than five years before the publication date of the application.

 

• Both sides filed evidence, with the opponent producing evidence of use. The applicant filed evidence and submissions, which included internet evidence of the term ‘vet wrap’ to try to distinguish its goods from those of the opponent, and internet evidence of other ‘cohesive bandage’ products using the word WRAP, in an attempt to demonstrate that WRAP was a descriptive element in the sector.

 

Decision     

 

• The HO provided a detailed analysis of the parties’ evidence and was particularly critical of the opponent’s evidence of use, because much of it fell outside of the relevant five-year period. Nevertheless, the HO considered that it was sufficient to demonstrate genuine use, but only for “bandages, cohesive bandages, supportive bandages”. The HO was also unimpressed by the applicant’s limited reference in its evidence to other ‘WRAP’ brands.

 

• Despite the applicant’s attempts to draw a distinction between the medical and veterinary sectors, the HO found the respective goods to be identical, citing the cases of Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) & Ors [2016] EWHC 3103 (Ch), and Gérard Meric v OHIM Case T-133/05. Importantly, the HO held that the applicant’s ‘bandages [supportive] for veterinary use’ fell within the scope of bandages, and were therefore identical to the opponent’s goods.  

 

• The HO also found that the word WRAP was not descriptive of the goods but was strongly allusive, noting that whilst the “pre-fixes ACTI and Ani respectively play a slightly greater role in the overall impression of the marks, the word wrap still contributes to the overall look and feel of the marks when their respective totalities are considered”.   

 

• However, fortunately for the applicant, when comparing the marks as a whole, the HO found that overall the shared elements of the marks (A..I.WRAP) did not create a likelihood of confusion, including no possibility of direct or indirect confusion.  This was because, although both marks contained the word WRAP, the prefixes ACTI and Ani were phonetically and conceptually dissimilar. The opposition was therefore unsuccessful.

 

• Other notable parts of the decision include the useful summary in paragraph 36 of the case law and principles for proving use of a trade mark registration in Walton International Ltd & Anot v Verweij Fashion BV [2018] EWCH 1608 (Ch) (28 June 2018), and the reference in paragraph 37 to the scope of word marks in Bentley Motors Limited v Bentley 1962 Limited (BL O/158/17).

 

Conclusion/Comment

 

The HO’s decision, although perhaps not wholly surprising, is interesting on various levels and appears well-reasoned and explained. The HO’s comments on the opponent’s evidence of use are a useful reminder that all evidence should be within the relevant period, and that the level of overall use does not need to be significant. The decision highlights the weight given to the beginning of marks, and that elements of marks which a party may discount as descriptive may nevertheless contribute to the overall impression of the marks.

 

The decision also reminds us that, particularly in the context of medical goods, attempts to argue that goods are dissimilar because they relate to different industries will rarely be of assistance.