Sitting yesterday as a Deputy Judge of the Chancery Division (England and Wales), Daniel Alexander QC had to address a tricky issue in Digipos Store Solutions Group Ltd v Digi International Inc, brought to the IPKat's attention by LexisNexis Butterworths' subscription-based service once again.
Digi was the proprietor of a UK trade mark consisting of a stylised version of the word 'Digi' for 'microcomputer hardware and microcomputer software programs for use in communications between digital electronic devices', as well as the word mark DIGI INTERNATIONAL for 'microcomputer hardware and software for data communications'. Digipos subsequently applied to register the word mark DigiPos for 'computer hardware, computers, servers, point-of-sale terminals, communications and networking systems, keyboards, display terminals, printers, proofing and encoding apparatus, document scanners, bar code scanners, computer software for use in the retail industry'. Digi opposed, maintaining that on account of the similarity of the respective marks and the identicality of the respective goods, there was a likelihood of confusion among the relevant consumers.
Before the Trade Mark Registry the hearing officer upheld the opposition in its entirety: used as a prefix, DIGI would not be taken to be descriptive by the average consumer but was distinctive -- and DigiPos was confusingly similar.
DigiPos appealed, arguing that the hearing officer had erred. Not only was required of him that he assess whether the earlier mark enjoyed an enhanced distinctiveness, and therefore an enhanced protection, as a result of its use -- he also had to assess the opposite: were there were any features of the earlier mark that diminished its distinctiveness [ie, such as the fact that it was the first five letters of the wholly descriptive word 'digital'] and therefore reduced the scope of the protection to which it was entitled.
Daniel Alexander QC dismissed the appeal. In his view
* before the court could interfere with the hearing officer's decision, it had to be satisfied that there had been a distinct and material error of principle in the decision in question, or that the hearing officer was clearly wrong. In undertaking the global assessment of the likelihood of confusion where an earlier mark, or an element of it, was allegedly descriptive of goods or services or otherwise weak, he to take into account the extent to which the sign had a lesser capacity to distinguish as well as whether it had a greater capacity to distinguish.Fair enough, says the IPKat, you don't have to agree with the decision so long as you can verify that the grounds on which it was reached were not plainly wrong--but imagine how galling it must be for a litigant to be told that, had his application started at the appellate level and in the Registry, he would have been successful. Merpel adds, the relationship between "digi" and "digital" is rather reminiscent to that between "intel" and "intelligent", don't you think?
* alleged errors that consisted of wrongly assessing similarities between marks or attributing too much weight to certain factors when applying a multifactorial global assessment were not errors of principle that entitled the court to interfere with the decision.
When considering and contrasting the characteristics of two marks, an element of the earlier mark might be distinctive in circumstances in which it was not distinctive in the later one. If, in that latter context, that element unlikely to be taken to denote trade origin, this factor had to be taken into account in making the global assessment, since it was an aspect of the lesser capacity to distinguish.
* the fact that a descriptive element had a lesser capacity to distinguish should be taken into account in the global assessment by recognizing that the average consumer was more likely to consider that a descriptive element was not being used, in the mark applied for, to identify the origin of the goods in question. Such a consumer was thus less likely to be confused as to the origin of goods bearing the mark.
* while it was handy to talk of the scope of protection of a weak earlier mark being reduced, that was neither a proposition of law nor a blueprint for assessment. A weak mark, in practice, was likely to have a reduced scope because there was a lower likelihood that other marks would be confused with it, if all that the respective marks had in common was the descriptive element.
* in this particular case, even though the court would have reached a different conclusion, there was nothing in the hearing officer's decision to allow the court to interfere with it. He did not fail to take account of the potential weakness of the 'Digi' element or any of the factors that he needed to consider. Further, it could not be said that he had failed to evaluate those factors of had done so in a way that was plainly erroneous.
How another Alexander solved a knotty problem here
Knotty problems for cats here